OPPOSITION No B 2 644 675

Regalead Ltd, Columbus House, Altrincham Road, Sharston, Manchester M22 9AF, United Kingdom (opponent), represented by Mewburn Ellis LLP, City Tower 40 Basinghall Street, London EC2V 5DE, United Kingdom (professional representative)

a g a i n s t

Creative Resins International Limited, McCabe Ford Williams, Bank Chambers, 1 Central Avenue, Sittingbourne, Kent ME10 4AE, United Kingdom (applicant), represented by Stobbs, Building 1000, Cambridge Research Park, Cambridge CB25 9PD, United Kingdom (professional representative).

On 06/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 644 675 is partially upheld, namely for the following contested goods and services:

Class 2: All the goods applied for in this Class, except for raw natural resins; parts and fittings for all the aforesaid goods.

Class 7: All the goods applied for in this Class, except for agricultural implements other than hand-operated; incubators for eggs; automatic vending machines; parts and fittings for all the aforesaid goods.

Class 37: All the services applied for in this Class.

Class 40: Treatment of glass to alter the optical properties; colouring glass sheets by surface treatment; window tinting treatment, being surface coating; information, advisory and consultancy services in relation to the aforesaid services.

2. European Union trade mark application No 14 523 716 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 all the goods and services of European Union trade mark application No 14 523 716 ‘CADRAM’ (word mark), namely against the goods in Classes 2, 7 and 9, and the services in Classes 37, 40 and 42. The opposition is based on the following earlier rights:

- European Union trade mark registration No 14 034 945  ‘CADRAM’ (word mark) in relation to which the opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR,

- the non-registered trade mark, trade name and company name ‘CADRAM’ used in the course of trade in the United Kingdom in relation to which the opponent invoked Article 8(4) 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.

a) The goods and services

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

Class 2: Paints and resin coatings for use on glass, windows and doors, including solvent- and water-based paints and resins.

Class 7: Machinery for the decorative glass industry; machinery for applying paints and other treatments to glass, windows and doors; machinery for manufacturing glass, windows and doors.

Class 37: Installation, repair and maintenance of machinery for the decorative glass industry, including machinery for applying paints and other treatments to glass, windows and doors and machinery for manufacturing glass, windows and doors; painting glass, windows and doors; applying resin coatings to glass, windows and doors.

The contested goods and services are the following:

Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; paints and resin coatings for use on glass, windows and doors, including solvent- and water-based paints and resins; resinous coatings; resins for coating purposes; lacquering sprays; spray-on-paints; spray coatings [paints]; decorative spray coating; spray coatings [lacquers]; spray coatings [varnishes]; powder coatings for application by spray; metallic powders for use in thermal spraying; paints; paint preparations; powder paints; paint thinners; decorating paints; architectural paints; exterior paints; waterproof paints; colouring matter for use on glassware; parts and fittings for all the aforesaid goods.

Class 7: Motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines; machinery for the decorative glass industry; glassware manufacturing machines; machines for processing glass; glass cutters (electrically-operated-); machinery for applying paints and other treatments to glass, windows and doors; machinery for manufacturing glass, windows and doors; parts and fittings for all the aforesaid goods.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; software; computer software; factory automation software; data processing software; industrial computer software; industrial process control software.

Class 37: Building construction; installation, repair and maintenance of machinery for the decorative glass industry, including machinery for applying paints and other treatments to glass, windows and doors and machinery for manufacturing glass, windows and doors; painting glass, windows and doors; applying resin coatings to glass, windows and doors; spray painting; paint spraying; repair or maintenance of glassware manufacturing machines and apparatus; glazing, installation, maintenance and repair of glass, windows and blinds; information, advisory and consultancy services in relation to the aforesaid services.

Class 40: Printing; pattern printing; letterpress printing; textile printing; printing services; offset printing; digital printing; screen printing; printing of images on objects; rental of printing machines and apparatus; providing information relating to photographic printing services; treatment of glass to alter the optical properties; metal treatment; electrochemical treatment; material treatment information; metal treatment services; treatment of hazardous materials; treatment and processing of plastics; heat treatment of metal surfaces; colouring glass sheets by surface treatment; window tinting treatment, being surface coating; information, advisory and consultancy services in relation to the aforesaid services.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; software engineering; software research; software development; software creation; software installation; software design; software customisation services; software maintenance services; computer software maintenance; software development services; computer software engineering; computer software consultancy; design of glass and of glass products; designing; construction design; hardware design; product design; furniture design; design planning; engineering design; design services; architectural design; design consultation; industrial design; information, advisory and consultancy services in relation to the aforesaid services.

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 2

The contested paints, varnishes, lacquers; paints and resin coatings for use on glass, windows and doors, including solvent- and water-based paints and resins; resinous coatings; resins for coating purposes; lacquering sprays; spray-on-paints; spray coatings [paints]; decorative spray coating; spray coatings [lacquers]; spray coatings [varnishes]; powder coatings for application by spray; paints; paint preparations; powder paints; decorating paints; architectural paints; exterior paints; waterproof paints; colouring matter for use on glassware are identical to the opponent’s paints and resin coatings for use on glass, windows and doors, including solvent- and water-based paints and resins, either because they are identically contained in both lists of goods or because the opponent’s goods are included in, or overlap with, the contested goods.

The contested preservatives against rust and against deterioration of wood; colorants; mordants; metals in foil and powder form for painters, decorators, printers and artists; metallic powders for use in thermal spraying are usually distributed through the same channels and sold in the same specialised shops as the opponent’s goods in Class 2. Moreover, they target the same public and are produced by the same undertakings. In addition, the contested paint thinners, apart from sharing the same similarity criteria, are complementary to the opponent’s goods. Therefore, the abovementioned goods are similar.

As concerns parts and fittings for all the aforesaid goods, referring to all the contested goods found identical or similar to the opponent’s goods, the Opposition Division considers that taking into account the nature of the contested goods, they cannot be clearly separated from these goods and therefore they are considered to be similar to the opponent’s goods in Class 2 because they share at least the same distribution channels, public and producers.

Although in the above examination it was found that the contested resin coatings, resinous coatings and resins for coating purposes were identical to the opponent’s goods, the contested raw natural resins are clearly raw materials. They may be used in industry to manufacture end products, such as varnishes, lacquers and other coatings. The mere fact that these contested goods are used for the manufacture of the opponent’s goods in Class 2 is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels are rather distinct (04/06/2019, R 2174/2018-5, NovaThin / Novatin, § 83). The same applies, by analogy, to the contested parts and fittings for all the aforesaid goods [raw natural resins]. Moreover, they have even less in common with the opponent’s goods in Class 7, which are specific machinery, and services in Class 37, which are specific installation, repair and maintenance services as well as painting and applying resin coatings. The fact that resin-based products are used in the provision of the aforementioned earlier services is not sufficient for finding any degree of similarity between these goods and services. Therefore, these goods are dissimilar to all the opponent’s goods and services.

Contested goods in Class 7

The contested machinery for the decorative glass industry; glassware manufacturing machines; machines for processing glass; glass cutters (electrically-operated-); machinery for applying paints and other treatments to glass, windows and doors; machinery for manufacturing glass, windows and doors are identical to the opponent’s machinery for the decorative glass industry; machinery for applying paints and other treatments to glass, windows and doors; machinery for manufacturing glass, windows and doors, either because they are identically contained in both lists of goods or because the opponent’s goods, include or are included in the contested goods.

Taking into account that the abovementioned goods are specialised machinery directed at professionals of the glass industry, the relevant public is likely to expect that the contested parts and fittings for all the aforesaid goods are produced and/or sold by the same undertaking that manufactures the end product. Likewise, the public may also expect the specific components which are particularly important for the functioning of the opponent’s machinery, such as may be the contested motors and engines (except for land vehicles), machine coupling and transmission components (except for land vehicles) and their parts and fittings, to be produced by, or under the control of, the manufacturer of the opponent’s abovementioned goods. Accordingly, these goods have the same public, producers and/or distribution channels and/or are complementary. Therefore, they are considered to be similar.

However, the contested agricultural implements other than hand-operated; incubators for eggs; automatic vending machines; parts and fittings for all the aforesaid goods are different kinds of machines and their parts and fittings which do not show any similarity with the opponent’s machinery in Class 7 or any other goods or services in Classes 2 or 37. They differ in nature, purpose and method of use. They do not have the same producers, distribution channels or relevant public. They are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 9

The contested goods in this Class cover a wide range of specific apparatus and instruments (scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; fire-extinguishing apparatus), recording media (magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media) and software (computer software; software; computer software; factory automation software; data processing software; industrial computer software; industrial process control software).

The opponent’s goods in Class 7 are machines which have nothing in common with the contested apparatus and instruments or recording media. Their nature and purpose are different. They are usually produced by different companies and distributed though different channels. They are neither complementary nor in competition.

The opponent’s argues that the contested software, in particular factory automation software; industrial computer software; industrial process control software are all suitable for use in controlling the kinds of machinery covered in Class 7 of the earlier mark. However, the Opposition Division considers that this fact on its own is not sufficient to render these goods similar. Software is produced by IT companies and the opponent’s machinery – which may incorporate software as their integral part – is manufactured by companies operating in a different sector of industry. The relevant public is not likely to expect that the same company is responsible for the production of the aforementioned applicant’s and opponent’s goods. Moreover, these goods are not clearly complementary, nor coincide in any other relevant similarity criteria.

There is also no relation between the contested goods in Class 9 and the opponent’s goods in Class 2 or services in Class 37.

Therefore, the contested goods in Class 9 and all the opponent’s goods and services are dissimilar.

Contested services in Class 37

Installation, repair and maintenance of machinery for the decorative glass industry, including machinery for applying paints and other treatments to glass, windows and doors and machinery for manufacturing glass, windows and doors; painting glass, windows and doors; applying resin coatings to glass, windows and doors are identically listed in both list of services. Moreover, the contested spray painting; paint spraying overlap with the opponent’s painting glass, windows and doors, and the contested repair or maintenance of glassware manufacturing machines and apparatus overlap with the opponent’s repair and maintenance of machinery for the decorative glass industry, including machinery for applying paints and other treatments to glass, windows and doors and machinery for manufacturing glass, windows and doors. Therefore, these services are identical.

The contested building construction; glazing, installation, maintenance and repair of glass, windows and blinds are similar to the opponent’s painting glass, windows and doors; applying resin coatings to glass, windows and doors as it is common in the market that the same or related undertakings provide these services together through the same distribution channels and they target the same public.

The contested information, advisory and consultancy services in relation to the aforesaid services are usually provided by the companies which have expertise in the services which are subject of the information, advice or consultation. Taking into account the above comparisons of the contested services, the Opposition Division considers that there is also a similarity between the related information, advisory and consultancy services and the abovementioned opponent’s services in Class 37, because they share, at least, their usual providers, distribution channels and relevant public.

Contested services in Class 40

The contested treatment of glass to alter the optical properties; colouring glass sheets by surface treatment; window tinting treatment, being surface coating involve glass treatment and transformation to obtain custom-made semi-finished or end products made of glass. Although the nature of these services is different from the nature of the opponent’s painting glass, windows; applying resin coatings to glass, windows in Class 37 which do not involve transformation of the essential properties of the goods, the purpose of these services is similar. Customers may choose between ordering custom-made tinted glass/windows through the applicant’s services or contracting the opponent’s services to apply a specific paint or resin coating which would produce an effect of a tinted glass/window. To this extend the services may be in competition. Therefore, they are similar to at least a low degree. The same applies to the related contested information, advisory and consultancy services in relation to the aforesaid services as they are usually provided together with, or even as part of, the services which are subject of the information, advice or consultation.

The remaining contested services in this Class do not have anything relevant in common with the opponent’s goods in Classes 2 and 7, and services in Class 37. These contested services cover printing and related services (printing; pattern printing; letterpress printing; textile printing; printing services; offset printing; digital printing; screen printing; printing of images on objects; rental of printing machines and apparatus; providing information relating to photographic printing services), material treatment services of different objects than those concerned also by the opponent’s services (metal treatment; electrochemical treatment; metal treatment services; treatment of hazardous materials; treatment and processing of plastics; heat treatment of metal surfaces) and information, advisory and consultancy services (material treatment information; information, advisory and consultancy services in relation to the aforesaid services). These goods and services differ in nature and purpose. They are neither complementary, nor in competition. Furthermore, they are usually provided by different undertakings through different channels. Even if in some cases the relevant public might coincide, this factor alone would not be sufficient to consider them as similar. Therefore, these contested services are dissimilar to all the opponent’s goods and services.

Contested services in Class 42

The contested services in this Class are services related to science and technology in general (scientific and technological services and research and design relating thereto; industrial analysis and research services), IT services (design and development of computer hardware and software; software engineering; software research; software development; software creation; software installation; software design; software customisation services; software maintenance services; computer software maintenance; software development services; computer software engineering; computer software consultancy), various design services (design of glass and of glass products; designing; construction design; hardware design; product design; furniture design; design planning; engineering design; design services; architectural design; design consultation; industrial design) and information, advisory and consultancy services in relation to the aforesaid services. These services do not have anything relevant in common with the opponent’s goods and services. Their natures and purposes are different. Even if the opponent’s goods in Class 7 may use software for their functioning, this does not imply that the contested software related services are similar to these goods, as they are produced/provided by different undertakings and involve different know-how. Moreover, they are not complementary. Likewise, the contested design of glass and glass products and the opponent’s glass-related goods (e.g. machinery for manufacturing glass) or services (e.g. painting glass; applying resin coatings to glass) are not complementary, as the use of the contested services is not indispensable or important for the use of the abovementioned opponent’s goods or services. They neither coincide in any other relevant similarity criteria. Therefore, the contested services in Class 42 and all the opponent’s goods and services are dissimilar.

b) The signs

CADRAM	CADRAM
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods and services are identical, as established above in section a) of this decision. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods and services.

Furthermore, some of the contested goods and services were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods and services.

Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. It follows 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 the identity or similarity of 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.

The examination of the opposition will therefore continue under Article 8(4) and (5) EUTMR in relation to these dissimilar goods and services.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE (ARTICLE 8(4) EUTMR) AND REPUTATION (ARTICLE 8(5) EUTMR)

Under Article 8(4) EUTMR the opponent relies upon the non-registered trade mark non-registered trade mark, trade name and company name ‘CADRAM’ used in the course of trade in the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Moreover, under Article 8(5) EUTMR the opponent claims that its earlier European Union trade mark registration has a reputation in the United Kingdom.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence showing, inter alia, use of that right in the course of trade of more than mere local significance - Article 7(2)(d) EUTMDR. The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

When the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark - Article 7(2)(f) EUTMDR.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade or evidence of the alleged reputation of the earlier European Union trade mark.

On 03/02/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 01/04/2018.

The opponent did not submit any evidence concerning the use in the course of trade of the earlier sign and the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR and one of the necessary conditions of Article 8(5) are not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Nicole CLARKE

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

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.