OPPOSITION No B 2 523 036

Aliaxis Holdings UK Limited, 1 Suffolk Way, Sevenoaks, Kent TN13 1WN, United Kingdom (opponent), represented by Forresters, Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative)

a g a i n s t

Bocarisa Holding Limited, Riga Feraiou 4, Omega Court, 4th Floor, Office 41, 3095 Limassol, Cyprus (applicant).

On 12/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 523 036 is upheld for all the contested goods.

2. Community trade mark application No 13 637 418 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all of the goods of Community trade mark application No 13 637 418. The opposition is based on Community trade mark registration No 501 684. The opponent invoked Article 8(1)(a) and (b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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

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

Class 6: Pipes, tubes and hose; connectors, joints, end-stops, adaptors, valves and clamps, being fittings for pipes, tubes and hose.

Class 9: Flowmeters, flow sensors; apparatus and instruments for measuring and controlling the flow of fluids; parts and fittings therefor.

Class 17: Pipes, tubes and hose; connectors, joints, end-stops, adaptors, valves and clamps, being fittings for pipes, tubes and hose.

The contested goods are the following:

Class 6: Bends (pipe -) of metal [other than parts of machines]; Branching pipes of metal including those from alloy steel and titanium; Elbows of metal for pipes; Fittings of metal for pipes; Junctions of metal for pipes; Manifolds of metal for pipelines; Pipes and tubes of metal; Flanges of metal [collars]; Metal cladding; Wall claddings of metal [building]; Cladding made of metal; Branching tubes of metal for pipelines.

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 branching pipes of metal including those from alloy steel and titanium; pipes of metal are included in the broader category of the opponent’s pipes in Class 6. The contested bends (pipe -) of metal [other than parts of machines] refer to curved or angled pieces of piping; the contested manifolds of metal for pipelines are pipes branching into several openings. Therefore, the foregoing contested goods are also covered by the broader category of the opponent’s pipes. The goods are identical.

The contested elbows of metal for pipes; junctions of metal for pipes are included in the opponent’s connectors, joints, being fittings for pipes in Class 6. The goods are identical.

The contested fittings of metal for pipes include, as a broader category, the opponent’s connectors, joints, end-stops, adaptors, valves and clamps, being fittings for pipes in Class 6. 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 tubes of metal; branching tubes of metal for pipelines are included in the broader category of the opponent’s tubes in Class 6. The goods are identical.

The contested flanges of metal [collars] are discs or rings that attach to a pipe with the purpose of providing increased support for strength, blocking off a pipeline or implementing the attachment of more items. These goods have the same purpose as the opponent’s connectors, joints and clamps, being fittings for pipes in Class 6. Furthermore, users would need them to be technically compatible, as they are used in conjunction with each other. The goods coincide in their manufacturers, distribution channels and the relevant public. They are similar to a high degree.

The contested metal cladding; wall claddings of metal [building]; cladding made of metal have some relevant commonalities with the opponent’s pipes in Class 6. Aside from being used with roofs and external surfaces of a building, cladding is commonly applied on piping thus creating a layer intended to control the infiltration of weather elements for example. Wall cladding can be used to cover and protect a piping system for aesthetical purposes. Such goods are from the same industry (building construction, broadly speaking). They commonly move through the same commercial channels and are of interest to the same consumer circles. Furthermore, consumers can expect that such metal articles are manufactured under the control of the same business entity. They are similar to a low degree.

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 to various degrees are rather specialised goods which are mainly directed at business customers with specific professional knowledge or expertise in the field of piping systems and building construction. The degree of attention is considered, on the whole, average.

3. The signs

GPS
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark consists of the letters ‘GPS’. The contested sign is a composite sign featuring the letters ‘GPS’ represented in blue, moderately stylised typeface; they are placed within a circular shape in blue and white. The lines of the circular shape are shown in a manner which confers upon the shape, as a whole, a somewhat three-dimensional effect.

The element ‘GPS’ in both signs, aside from the possibility of being perceived as some kind of an abbreviation standing for ‘global positioning system’ or a company name for instance, will not convey any semantic content that would go beyond the mere sum of the three letters that the element contains. At any rate, the element ‘GPS’ conveys no evident concept in relation to the goods at issue and will be perceived as a fanciful term enjoying an average degree of distinctiveness. Therefore, the inherent distinctiveness of the earlier mark’s sole component is normal.

The role of the figurative element in the contested sign is essentially decorative – it merely embellishes the verbal element, ‘GPS’. Therefore, the figurative element is less distinctive than the verbal element in the contested sign.

The signs under comparison have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘GPS’ which constitute the only component of the earlier mark and are the contested sign’s distinctive element. However, the signs differ in the specific stylisation of the letters ‘GPS’ and the figurative element present in the contested sign only, although it has to be kept in mind that the figurative element is less distinctive than the verbal element.

Furthermore, it is pointed out that, 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).

Given that the earlier mark is fully reproduced in the contested sign’s distinctive component, the signs are highly similar visually.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciations of the signs are identical.

Conceptually, since the element ‘GPS’ lacks a clear an unambiguous semantic content, particularly in the context of the goods at issue, and the figurative element of the contested sign will not trigger any specific semantic association, a conceptual comparison between the signs will not take place. To that extent, 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.

According to the opponent, the earlier mark has been extensively used, in the United Kingdom, since 2001 and enjoys an enhanced scope of protection in connection with all of the goods for which it is registered.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition 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).

The opponent submitted the following evidence:

• Excerpt from the UK Companies House Registry, providing details of a company named Glynwed Pipe Systems Limited. In the explanation of grounds, it is stated that the earlier mark, ‘GPS’, is an acronym for that company name, and that this company belongs to the Aliaxis Group of Companies, which includes also the opponent, Aliaxis Holdings UK Limited.

• A printout, dated 10/02/2015, from the Aliaxis Group website, www.aliaxisukpurchasing.co.uk, which, according to the opponent, shows the UK businesses within the Aliaxis Group of Companies including a reference to Glynwed Pipe Systems Limited by way of the trade mark and acronym: .

• Printouts, dated 10/02/2015, from the GPS PE Pipe Systems website, www.gpsuk.com, showing a range of pipes and fittings for piping systems offered under the trade mark .

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite showing some very limited use of the trade mark and only on materials that originate from sources that are directly or indirectly related to the opponent, the evidence provides no information on the extent of such use. The fact that a company named Glynwed Pipe Systems has operated on the UK market and has used the trade mark ‘GPS’ since 2001 is not in itself sufficient to indicate the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public.

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 clear 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). This principle is particularly relevant for the assessment of likelihood of confusion, as, in the present case, the signs are highly similar and some of the goods are identical or highly similar, whereas some other goods are only similar to a low degree.

The similarity between the signs results from the fact that the earlier mark, being inherently distinctive in relation to the goods at issue, is fully reproduced in the contested sign’s distinctive component, namely the letters ‘GPS’. When encountering the signs at issue, the relevant public may think that the contested sign is a graphical representation of the earlier mark, featuring the same verbal element emblazoned against an embellishing figurative element.

Therefore, it is considered that the differences limited to the contested sign’s figurative element are clearly insufficient to remove the overall impressions produced by the signs far enough as to enable the relevant public to safely distinguish between the signs in the context of the identical or highly similar goods at issue. Taking into account the interdependence principle, the same also applies to the goods that are similar to a low degree, as the high similarity of the signs outweighs the moderate similarity between the respective goods.

Considering all the above, and based on the average degree of inherent distinctiveness of the earlier mark, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 501 684. It follows that the contested trade mark must be rejected for all of the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) CTMR.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Carmen SANCHEZ PALOMARES

Solveiga BIEZA

Jessica LEWIS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.