OPPOSITION No B 2 624 438

CEMEX Deutschland AG, Frankfurter Chaussee, 15562 Rüdersdorf bei Berlin, Germany (opponent), represented by Kai Berkenbrink, Turmstr. 22, 40878 Ratingen, Germany (professional representative)

a g a i n s t

Sand Pools Iberica SL, Calle Industria 27, 21110 Aljaraque/ Huelva, Spain (applicant), represented by Carmen Blazquez, Estrella Polar 28 8I, 28007 Madrid, Spain (professional representative).

On 27/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 624 438 is upheld for all the contested goods, namely

Class 19: Building and construction materials.

2. European Union trade mark application No 14 659 221 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 659 221, namely against some of the goods, building and construction materials, in Class 19. The opposition is based on German trade mark registration No 39 407 427. 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

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

Class 19: Inorganic and organic binders.

The contested goods are the following:

Class 19: Building and construction materials.

Contested goods in Class 19

The contested building and construction materials include, as broader categories, the opponent’s inorganic and organic binders, which are materials or substances that hold or draw other materials together to form a cohesive whole by adhesion or cohesion; the organic binders are, for example, bitums, animal and plant glues, polymers, and the inorganic binders are, for example, lime, gypsum, cement, liquid glass, which are all used as building and construction material. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. Construction material can be both addressed to the general consumer for the so called DIY or to experts in the field. The degree of attention may vary from average to above average. Some of the goods are normally purchased on an infrequent basis for a very specific purpose, it is also the responsibility of the professionals to use secure and safe building materials and their price could also be high. Therefore, for these goods the level of attention of the relevant public is considered to be above average.

3. The signs

PREMIX	PREMIX MARBLETITE
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 ‘PREMIX’ and the contested sign is a word mark consisting of the words ‘PREMIX MARBLETITE’.

The earlier mark and the contested sign have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

The earlier mark has no element that could be clearly considered more distinctive. The word ‘PREMIX’ may be perceived by a part of the public, mainly the more specialised public that is more acquainted with the English language, as referring to a substance or object which is mixed in an early stage in the manufacturing process; a substance already mixed, ready to use. According to the applicant, in its observations of 25/07/2016, the word ‘PREMIX’ is a descriptive word, meaning ‘premixed substance’. Therefore, according to the applicant the earlier mark, in connection with the goods, has a low distinctive character, being a generic term that cannot be monopolised.

The Opposition Division points out the following, which is applicable here: When dealing with the distinctiveness of the earlier mark as a whole, the latter should always be considered to have at least a minimum degree of inherent
distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a
‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012,
C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the
registration of a European Union trade mark, the validity of national trade marks may
not be called into question’. The Court added that ‘it should be noted that the
characterisation of a sign as descriptive or generic is equivalent to denying its
distinctive character’.

However, the Opposition Division does not fully share the applicant’s opinion, as it considers that the word ‘PREMIX’ of the earlier mark, and also of the contested sign, has at least a minimum degree of distinctiveness for the relevant goods in Class 19, otherwise it would not have been registered in the German trade mark Registry either. Furthermore, for another part of the public, that has no knowledge of English or does not belong to the specialised public, the earlier mark and also the word ‘PREMIX’ of the contested sign, have no meaning and they are normally distinctive.

Regarding the contested sign, the word ‘PREMIX’ is equally distinctive with the word ‘MARBLETITE’ for that part of the public that does not understand the word ‘PREMIX’, while for another part of the public, for which the word ‘PREMIX’ has a minimum degree of distinctiveness, the word ‘MARBLETITE’ is more distinctive.

Visually, the signs are similar to the extent that they coincide in the element ‘PREMIX‘, for a part of the public being an element with a normal distinctiveness, and for another part of the public an element with at least a minimum degree of distinctiveness. This means that the whole earlier mark is entirely contained at the beginning of the contested sign. On the other hand, they differ in the word ‘MARBLETITE’ of the contested sign that is not shared by the earlier mark.

The first parts of the conflicting marks are identical. 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.

Therefore, the signs are similar to an average degree, at least for a part of the public.

Aurally, the pronunciation of the signs coincides in the sound of the word /PRE-MIX/, present identically in both signs and falling at the beginning of the contested sign. The marks differ in the pronunciation of the additional word /MARBLETITE/, which is placed in second position in the contested sign. Therefore, the signs are aurally similar to an average degree, for at least a part of the public.

Conceptually, for a part of the relevant public, 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. For another part of the public, the word ‘PREMIX’ is perceived as having the meaning as pointed out above. The word ‘PREMIX’ is also perceived as such in the contested sign and the word ‘MARBLETITE’ is meaningless. For this part of the public, as the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree.

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 a part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal for this part of the public. However, for another part of the public, and considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as minimal.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found to be identical and the level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness for a part of the public and for another part of the public it has a minimum degree of distinctiveness.

The element ‘PREMIX’ of the earlier mark, even though it has a minimum degree of inherent distinctiveness for the relevant goods for a part of the relevant public, is entirely contained in the contested sign. In addition the goods are identical. Therefore, for these goods the interdependence principle is applicable, i.e. the principle that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, in this case the identity of the contested goods offsets the lesser degree of similarity between the signs. The differentiating word ‘MARBLETITE’ of the contested sign falls also at the end, where the consumer normally focuses less.

It is likely that at least a part of the consumers on being exposed to the use of both signs, share the same concept of ‘PREMIX’ and in relation to identical goods, and having an imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), might perceive the mark applied for as a sub-brand and/or a variation of the earlier mark, designating a new line of goods. Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

A coincidence in an element with a lower degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical. In the present case, first of all, for a part of the public the word ‘PREMIX’ has a normal distinctiveness for the relevant goods and falls at the beginning of the contested sign, but secondly, even for that part of the public that finds the word ‘PREMIX’ of having a minimal distinctive character, the overall impression of the marks is also very similar, as the word ‘PREMIX’ is quite a long word at the beginning of the contested sign.

The relevant consumers might be led, therefore, by the visual, aural and conceptual average similarity of the marks, for at least a part of the public, to believe that the identical goods covered by the marks come from the same undertaking or economically-linked undertakings. Even though the consumer would not immediately confuse them, they would associate the marks as having the same origin. Taking into account all the circumstances, the differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that the consumers will not be able to distinguish the marks in dispute and will perceive them as having the same origin.

Considering all the above, 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 German trade mark registration No 39 407 427. It follows that the contested trade mark must be rejected for all the contested goods.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘PREMIX’. In support of its argument the applicant refers to approximately ten trade mark registrations in the European Union, Greece, the United Kingdom, Italy, Czech Republic and France.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘PREMIX’. Under these circumstances, the applicant’s claim must be set aside.

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 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Beatrix STELTER

Chantal VAN RIEL

Begoña URIARTE VALIENTE

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.