OPPOSITION Nо B 2 788 498

 

Tecnopol Sistemas, S.L., Pol. Ind. "Z" - C/ de la Prensa, 5, 08150 Parets del Vallès, Spain (opponent), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative) 

 

a g a i n s t

 

FSI Limited, Westminster Industrial Estate, Tamworth Road, DE12 7DS Measham, United Kingdom (applicant), represented by Swindell & Pearson Ltd, 48 Friar Gate, DE1 1GY Derby, United Kingdom (professional representative).

On 30/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 2 788 498 is partially upheld, namely for the following contested goods:

 

	Class 17: all the goods in this Class except for: pipe collars; expansion joints; fire resistant expansion joints. Class 19: Building materials having acoustic properties; acoustic board, panels, screens, sheets and tiles.
2.	European Union trade mark application No 15 527 401 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 17/10/2016, the opponent filed an opposition against all the goods of European Union trade mark application No 15 527 401 ‘TECNO-COAT’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 13 576 161, (figurative mark). 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.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 576 161.

 

a) The goods and services

 

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

 

Class 1: Polyurea; one-component polyurethane.

Class 17: Polyurethane foam.

Class 37: Construction, repair, maintenance and installation of waterproof linings for structures and buildings.

Class 40: Waterproofing of existing buildings.

The contested goods are the following:

 

Class 17: Sealing and jointing substances; sealants; packing, stopping, insulating and sealing materials; compounds and preparations for sealing joints; mastics; fire resistant and protective sealants; fire resistant and protecting sealing, jointing, packing, stopping and insulating materials; fire resistant sealing, packing, stopping, insulating and jointing mastics, tapes, foams and fillers; fire resistant joints, panels, plates, seals; gap seals; insulating materials; thermal insulating materials; fibres; insulating board; pipe wrappings; pipe sleeves; pipe collars; acoustic insulants; acoustic boards, panels, sheets and tiles' materials for acoustic insulation; pillows for the prevention of fire penetration; expansion joints; fire resistant expansion joints; putty; fire resistant putty; fire protection sleeves; fire panels and fire protection materials for preventing the spread of fire in buildings; fire protective seals for use in the construction industry.

Class 19: Building materials; non-metallic building materials; construction materials; intumescent building and construction materials; fire stopping building materials; fire resistant building materials; mortar; fire resistant mortar; building materials having acoustic properties; acoustic board, panels, screens, sheets and tiles; fire resistant collars; fire protective coatings for use in the construction industry.

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 17

The contested packing, stopping, insulating and sealing materials; insulating materials; thermal insulating materials; acoustic insulants include, as broader categories, the opponent's polyurethane foam. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The following contested goods have, broadly speaking, the purpose of insulation – thermal, acoustic, water, fire, dust, etc.: sealing and jointing substances; sealants; compounds and preparations for sealing joints; mastics; fire resistant and protective sealants; fire resistant and protecting sealing, jointing, packing, stopping and insulating materials; fire resistant sealing, packing, stopping, insulating and jointing mastics, tapes, foams and fillers; fire resistant joints, panels, plates, seals; gap seals; fibres; insulating board; pipe wrappings; pipe sleeves; acoustic boards, panels, sheets and tiles' materials for acoustic insulation; pillows for the prevention of fire penetration; putty; fire resistant putty; fire protection sleeves; fire panels and fire protection materials for preventing the spread of fire in buildings; fire protective seals for use in the construction industry. Fibres, for example, can be used as sealants for pipes and fittings. Pipe wrappings and pipe sleeves are used for pipe protection, including for insulation. Furthermore, the contested goods target the same users and can be found in the same outlets as the opponent’s polyurethane foam. Therefore, they are found at least similar to a low degree to the opponent’s polyurethane foam in Class 17.

The contested pipe collars are parts used rather for decoration purposes, to add a finishing touch to a pipe coming up from the floor or from the wall, or for fastening pipes. As such they are not used for insulation. Expansion joints are elements that are used to hold parts together and absorb the expansion or contraction of building materials and vibration or to allow movement due to, for example, ground settlement thus avoiding cracks. The opponent’s goods and services are polyurea and polyurethane as raw materials, polyurethane foam, construction, repair, maintenance and installation and waterproofing services.

Therefore, the contested pipe collars; expansion joints; fire resistant expansion joints have different natures, purposes and methods of use from those of the opponent’s goods and services. Moreover, by their nature, goods are generally dissimilar to services. Similarity can be found if the goods and services are complementary or in competition because they share the same purpose. However, in this case the contested goods are neither in competition nor complementary to the opponent’s goods and services. Furthermore, the goods and services under comparison have different commercial origin. Therefore, they are dissimilar.

Contested goods in Class 19

The contested building materials having acoustic properties; acoustic board, panels, screens, sheets and tiles include for example wooden materials with acoustic insulation properties. As such they have the same purpose as the opponent’s polyurethane foam, namely insulation, and target the same consumers. Therefore, they are similar to a low degree.

The remaining contested goods in this class, building materials; non-metallic building materials; construction materials; intumescent building and construction materials; fire stopping building materials; fire resistant building materials; mortar; fire resistant mortar; fire resistant collars; fire protective coatings for use in the construction industry are various building materials. Although some of them may be fire-resistant, they are not used for the sole purpose of insulation. Furthermore, they have different nature and method of use from those of the opponent’s earlier goods and services, which are polyurea and polyurethane as raw materials, polyurethane foam, construction, repair, maintenance and installation and waterproofing services. Since, by nature, goods and services are dissimilar, similarity between goods and their installation, maintenance and repair can only be established when the following cumulative conditions are fulfilled: it is common in the relevant market sector for the manufacturer of the goods to also provide such services and the relevant public coincides installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not aftersales services). However, the first condition is not fulfilled in this case as it is not typical that the companies involved in construction, repair, maintenance and waterproofing also manufacture building materials. Furthermore, the goods and services are neither in competition nor complementary. Even if they may target the same consumers this on its own would not be enough to find similarity.

 

b) The signs

 

	TECNO-COAT
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 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 figurative mark consisting of only one verbal element, ‘TECNOCOAT’. The figurative aspects are limited to a rather standard upper-case typeface, but for the initial letter ‘T’, and blue colour, which have a very low, if any, impact on the consumers.

The only verbal element of the contested sign is ‘TECNO-COAT’, which differs from the verbal element of the earlier mark only in the hyphen. Although the hyphen ‘-‘ does serve to separate the element in two, it is merely a punctuation symbol and as such it does not have trade mark significance.

The distinctiveness of the earlier mark as a whole is defined by the distinctiveness of its verbal element ‘TECNOCOAT’. However, whether the meaning is attributed to the word ‘TECNOCOAT’ and to its components ‘TECNO’ and ‘COAT’ or not is immaterial, as this verbal element is identical in both marks and, therefore, will endow both of them with an equal degree of inherent distinctiveness.

It follows that the signs are visually highly similar, aurally identical and conceptually either identical, if a meaning would be assigned to the element ‘TECNOCOAT’ and its components ‘TECNO’ and ‘COAT’, or if not, 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.

 

 

c) Global assessment, other arguments and conclusion

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar.

The signs are visually highly similar, aurally identical and conceptually either identical, if a meaning would be assigned to the element ‘TECNOCOAT’ and its components ‘TECNO’ and ‘COAT’, or if not, the conceptual aspect does not influence the assessment of the similarity of the signs. The components of the contested sign are entirely included in the only verbal element of the earlier mark. Moreover, the only difference between the verbal elements is the hyphen in the contested sign which has no trade mark significance. Therefore, it is highly conceivable that the relevant public will confuse the marks and believe that the identical and similar to varying degrees goods offered under the contested sign come from the same or economically linked undertaking, as those bearing the earlier mark.

This conclusion would hold true even if the distinctiveness of the coinciding element and the earlier mark as a whole were very low and irrespective of the degree of attention and the sophistication of the relevant public.

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).

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 576 161. 

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. The opposition also successes as regards those goods found to be similar to a low degree, as the quasi identity of the signs compensates that lesser degree of similarity of the goods.

 

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade mark: European Union trade mark registration No 15 417 454,  , registered for the following goods and services:

- Class 1: Polyurea; one-component polyurethane;

- Class 17: Polyurethane foam;

- Class 37: Construction, repair, maintenance and installation of waterproof linings for structures and buildings;

- Class 40: Cloth waterproofing; damp-proofing to existing buildings.

 

This mark covers the same scope of goods and services and, additionally, cloth waterproofing which is clearly different to those applied for in the contested trade mark. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

 

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Anna ZIÓŁKOWSKA

Tzvetelina IANTCHEVA

Biruté SATAITE-GONZALEZ

 

 

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.