OPPOSITION No B 2 852 781

Finopti (Société par Actions Simplifiée Unipersonelle), Route de Condom, 47520 Le Passage, France (opponent), represented by IPSide, 6 Impasse Michel Labrousse, 31100 Toulouse, France (professional representative)

a g a i n s t

Giovanni Maria Laporta, 467 Whippendell Road, Watford, Hertfordshire WD18 7PS, United Kingdom (applicant), represented by Trademarkroom Limited, 4 Brunswick Place Southampton, Hampshire SO15 2AN, United Kingdom (professional representative).

On 11/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 852 781 is partially upheld, namely for the following contested goods and services:

Class 6: Security window and door hardware locks for window and door systems. metallic doors; door-locking devices; windows made of metal; window-locking devices; security grilles; security gates; security shutters; door fittings; window fittings, metal hinges and stays for doors and windows; safety fittings for windows and doors; anti-slam devices made of metal for windows and doors; finger guards for windows and doors; door and window parts; furniture and architectural fittings; metallic security bolts and hinges for double glazing systems; locks and latches; parts and fittings for all the aforesaid goods.

Class 19: Window and door systems; building profiles fitments for windows and double- window and door glazing systems; non-metallic doors; non-metallic windows; non-metallic door panels; non-metallic door frames, non-metallic window frames; non-metallic fittings for doors, windows, gates or furniture; non-metallic security devices for doors, windows, gates or furniture; double glazing systems; building fitments for windows and double glazing systems; parts and fittings for all the aforementioned goods.

Class 20: Security hardware (not of metal) for window and door systems; non-metallic fittings for doors or windows; non-metallic security fittings for doors or windows; locks and latches; parts and fittings for all the aforesaid goods.

Class 37: Installation of windows and doors.

Class 40: Glass, window, door material and profile manufacture.

2. European Union trade mark application No 15 201 221 is rejected for all of the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 201 221 for the word mark ‘Smart Space’. The opposition is based on French trade mark registration No 97 707 111 for the word mark ‘SMART’. 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 on which the opposition is based are the following:

Class 6: Aluminium profiles, in particular for doors and cupboard facades.

The contested goods and services are the following:

Class 6: Security window and door hardware locks for window and door systems. metallic doors; door-locking devices; windows made of metal; window-locking devices; security grilles; security gates; security shutters; door fittings; window fittings, metal hinges and stays for doors and windows; safety fittings for windows and doors; anti-slam devices made of metal for windows and doors; finger guards for windows and doors; door and window parts; furniture and architectural fittings; metallic security bolts and hinges for double glazing systems; locks and latches; parts and fittings for all the aforesaid goods.

Class 19: Window and door systems; building profiles fitments for windows and double- window and door glazing systems; non-metallic doors; non-metallic windows; non-metallic door panels; non-metallic door frames, non-metallic window frames; non-metallic fittings for doors, windows, gates or furniture; non-metallic security devices for doors, windows, gates or furniture; double glazing systems; building fitments for windows and double glazing systems; parts and fittings for all the aforementioned goods.

Class 20: Security hardware (not of metal) for window and door systems; non-metallic fittings for doors or windows; non-metallic security fittings for doors or windows; locks and latches; parts and fittings for all the aforesaid goods.

Class 37: Installation of windows and doors.

Class 40: Glass, window, door material and profile manufacture; electricity generation; energy production.

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 opponent’s list of goods, indicates that the specific goods 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 6

The earlier mark’s aluminium profiles are semi-finished products used for the manufacturing of other goods.

The contested door and window parts; architectural fittings; parts and fittings for all the aforesaid goods, include, as broader categories the opponent’s aluminium profiles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested furniture; parts and fittings for all the aforesaid goods, include, as broader categories the opponent’s aluminum profile, since the latter embraces e.g. fronts for furniture, such as cupboard facades. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The remaining contested goods, namely security window and door hardware locks for window and door systems. metallic doors; door-locking devices; windows made of metal; window-locking devices; security grilles; security gates; security shutters; door fittings; window fittings, metal hinges and stays for doors and windows; safety fittings for windows and doors; anti-slam devices made of metal for windows and doors; finger guards for windows and doors; locks and latches; metallic security bolts and hinges for double glazing systems; parts and fittings for all the aforementioned goods are all sorts of doors and gates of metal and hereto related parts and fittings, including mechanisms for opening and security closing said goods.

These contested goods should be considered similar to a low degree to the earlier goods. It is clear that the manufacturers of metal windows or doors may plausibly extend their manufacturing capabilities to aluminium profiles. These goods are distributed via the same channels and aimed at the same consumers. In many cases, they are also complementary.

Contested goods in Class 19

The contested window and door systems; building profiles fitments for windows and double- window and door glazing systems; double glazing systems; building fitments for windows and double glazing systems; parts and fittings for all the aforementioned goods are similar to the opponent’s aluminium profiles. These goods will be distributed via the same channels and aimed at the same consumers. They are also complementary.

The contested non-metallic doors; non-metallic windows; non-metallic door panels; non-metallic door frames, non-metallic window frames; non-metallic fittings for doors, windows, gates or furniture; non-metallic security devices for doors, windows, gates or furniture; parts and fittings for all the aforementioned goods are all sorts of windows, doors and gates or furniture not of metal, coverings, frames and fittings not of metal for said goods.

The contested goods should be considered similar to a low degree to the earlier goods. The manufacturers of these non-metallic goods may plausibly extend their manufacturing capabilities to metallic accessories, fittings and mechanisms for windows and doors, such as the opponent’s aluminium profiles. These goods are distributed via the same channels and aimed at the same consumers. They might be also in competition with each other.

Contested goods in Class 20

The contested goods are non-metallic accessories, fittings and mechanisms for windows and doors including security hardware, locks and latches and other fittings. These contested goods should be considered similar to a low degree to the earlier goods. It is clear that the manufacturers of non-metallic accessories, fittings and mechanisms may plausibly extend their manufacturing capabilities to metallic goods for the same, such as the opponent’s aluminium profiles. These goods are distributed via the same channels and aimed at the same consumers. They might be also in competition with each other.

Contested services in Class 37

The contested installation of windows and doors is similar to the opponent’s aluminium profiles in Class 6. There is a market tendency for these services to be provided also by the manufacturer of the windows and doors. Since the earlier goods include semi-finished products which could be used for the manufacturing of windows and doors, the Opposition Division considers that these contested services and the earlier goods may be provided by the same companies, aimed at the same consumers and supplied via the same channels.

Contested services in Class 40

The contested glass, window, door material and profile manufacture is similar to the opponent’s aluminium profiles in Class 6. Since the earlier goods include semi-finished products, which could be used for the manufacturing of windows, doors and profiles as such, the Opposition Division considers that these contested services and the earlier goods may be provided by the same companies. Moreover, they are aimed at the same consumers and supplied via the same channels.

The contested electricity generation; energy production are dissimilar to the earlier mark’s aluminium profiles in Class 6. The contested services relate specifically to the process of generating electric power from sources of primary energy or other activities focused on obtaining sources of energy. The Opposition Division does not believe that the producer of the earlier goods will also provide these services, which are not connected with the earlier goods. As a rule, services are not similar to goods, as they are intangible, while goods are not. No exception may be made to this rule here as the company which produces the earlier goods will not also supply the contested services. Therefore, there is no complementarity between them and they will be aimed at different consumers.

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 to various degrees are directed at the public at large and also at specialists in the construction industry such as building contractors or architects.

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

3. The signs

SMART	Smart Space
Earlier trade mark	Contested sign

The relevant territory is France.

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).

Both marks are word marks. At this point it should be pointed out that in case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.

The common term ‘SMART’ has no meaning, at least for a significant part of the public in relevant territory. The same holds true insofar as the second element ‘Space’ of the contested sign is concerned. Consequently, the distinctiveness of these terms in relation to the goods and services concerned should be seen as normal.

Visually and aurally, the signs coincide in the word/ sound of the word ‘SMART’ which forms the entire earlier mark. They differ in the appearance and pronunciation of the additional verbal element of the contested mark ‘SPACE’. Although, this element is distinctive, and, therefore, will have an impact on the consumer’s visual and aural perception of the marks, it does not alter the fact that the first word of the contested sign has an independent distinctive role as it is visually separated from the first one.

Furthermore, it must be taken into account that the common element ‘SMART’, as the first element of the contested sign, will catch the primary attention of the consumer when encountering the 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. Consequently, the fact that the first verbal element of the contested sign coincides with the earlier mark has to be taken into account when assessing the likelihood of confusion between the marks.

Hence, the marks are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for at least a significant part of 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 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 (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.

As has been concluded, the goods and services are partly identical, partly similar to various degrees and partly dissimilar. In this regard it should be pointed out that the applicant did not provide the Opposition Division with any arguments to be taken into account in the comparison of the goods and services. The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large, including professionals, whose level of attention varies from average to high.

The signs are visually and aurally similar to a high degree, whereas the conceptual comparison remains neutral.

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). Having said that, it is stressed that 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 Division considers that the signs are sufficiently similar to lead to a likelihood of confusion, even taking into account an above average attention of the relevant public, in particular the professionals. Consequently, there is a likelihood of confusion with respect to the goods and services found to be identical and similar to various degrees to the earlier mark’s goods.

Therefore, in view of all the relevant factors in the present case and also the principle of interdependence between them, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. Thus, in the present case, the higher similarity between the signs will outweigh the low similarity of these contested goods.

Moreover, it is conceivable that the relevant consumer will perceive the contested sign as a sub-brand of the applicant’s mark, bearing the additional term ‘SPACE’, being a variation of the earlier mark configured in a different way according to the type of goods and services which it designates. It is quite possible for an undertaking to use sub-brands, that is to say signs that derive from a principal mark and which share with it a common element in order to distinguish various lines from one another. It is, therefore, conceivable that the targeted public may regard the goods and services designated by the trade marks in conflict as belonging to two ranges of goods and services coming, nonetheless, from the same undertaking.

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 various degrees) to those of the earlier trade mark.

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

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 will 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

Vít MAHELKA

Klaudia MISZTAL

Chantal VAN RIEL

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.