OPPOSITION No B 2 802 810

Aluminios y Accesorios del Mediterraneo, S.L., C/ del Dracma, Parc 69 74, pol. ind. Las Atalayas, buzon 20114, 03114 Alicante, Spain (opponent), represented by Maria Del Carmen Ruiz Vazquez, Espinosa y Cárcel, 9-bajo, 41005 Sevilla, Spain (professional representative)

a g a i n s t

Alumexx B.V., Leerlooierstraat 30, 4871 EN, Etten-Leur, The Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands (professional representative).

On 19/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 802 810 is partially upheld, namely for the following contested goods and services:

Class 6: Common metals and their alloys; metal building materials; metal panels; aluminium slabs; walls of metal; aluminium walls; ceilings of metal; ceilings of aluminium; eaves of metal; eaves of aluminium; bridges of metal; bridges of aluminium; transportable buildings of metal; framework scaffolding of metal; scaffolding of aluminium; platform steps for use with scaffolding; platform floors for use with scaffolding; scaffolding with folding platforms; mobile boarding stairs (metal -) for passengers; mobile boarding stairs of aluminium for passengers; mobile steps [ladders] of metal; mobile steps (ladders) of aluminium; metal ladders; ladders of aluminium; aluminium ladder rungs; ladder supports of metal; ladder supports of aluminium; ladder supports of metal; ladder stand-offs of aluminium; ladder hooks of metal; ladder hooks of aluminium; work platforms (scaffolding); work platforms (scaffold towers); materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes.

Class 37: Building construction; repair of common metals and their alloys, building materials, boards, walls, ceilings, eaves, bridges, transportable buildings of metal, scaffolding, platform steps for use with scaffolding and platform floors for use with scaffolding; repair of scaffolding with folding platforms, mobile boarding stairs, mobile steps, ladders, ladder rungs, ladder stand-offs, ladder supports, ladder hooks, work platforms, materials of metal for railway tracks, non-electric metallic cable and threads, locksmithery, small items of metal hardware, pipes and tubes of metal and safes; installation services relating to common metals and their alloys, building materials, boards, walls, ceilings, eaves, bridges, transportable buildings of metal, scaffolding, platform steps for use with scaffolding and platform floors for use with scaffolding; installation services relating to scaffolding with folding platforms, mobile boarding stairs, mobile steps, ladders, ladder rungs, ladder stand-offs, ladder supports, ladder hooks, work platforms, materials of metal for railway tracks, non-electric metallic cable and threads, locksmithery, small items of metal hardware, pipes and tubes of metal and safes; scaffolding; scaffolding dismantling; scaffolding rental; rental of ladders; rental of ladders; information and consultancy relating to the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet.

2. European Union trade mark application No 15 548 803 is rejected for all the above goods and services. It may proceed for the remaining services (namely: all services in Class 35).

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 15 548 803 for the word mark ‘ALUMEXX’. The opposition is based on Spanish trade mark registration No 3 604 554 for the figurative mark and on Spanish trade mark registrations No 2 691 934 and No 2817266, both for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark on the substantiation of earlier Spanish marks Nos 3 604 554 and 2 691 934

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 is restricted in this examination to the facts, evidence and arguments submitted 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 submit 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 evidence 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 a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

The applicant argues in its observations of 07/12/2018 that the opponent’s earlier Spanish trade mark registrations No 3 604 554 and No 2 691 934 are not duly substantiated because none of the attached extracts from the Spanish Trade Mark Office would show the respective registration date; furthermore, according to the applicant, the extract related to Spanish trade mark registration No 2 691 934 filed in 2006 would not show that this earlier mark would have been duly renewed.

However, the Opposition Division notes that the extracts filed together with the opposition notice on 15/11/2017, contrary to the applicant’s allegations, show that earlier Spanish mark No 2 691 934 was registered on 27/06/2006 and duly renewed on 10/03/2016 and that Spanish trade mark registration No 3 604 554 was registered on 16/08/2016. Therefore, the opponent has submitted the necessary evidence of the existence, validity and scope of protection of these earlier marks, so that the claims of the applicant in this regard must be set aside.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of Spanish trade mark No 2 817 266 on which the opposition, inter alia, is based.

The request was filed in due time and is admissible given that this earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 20/07/2018 the opponent was given two months to file the requested proof of use.

The opponent did not submit any evidence concerning the use of this earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition. Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR as far as it is based on this earlier Spanish trade mark No 2 817 266.

The opposition will proceed hereunder with reference to the opponent’s earlier Spanish trade mark registrations No 3 604 554 and No 2 691 934.

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 Spanish trade mark registration No 3 604 554 which covers the broadest scope of goods and services.

a) The goods and services

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

Class 6: Common metals and their alloys; metallic construction materials; metallic transportable constructions; metallic materials for ferreas; cables and non-electrical metal wires; locksmith and hardware metals; tubes and pipes; flow boxes; metallic minerals; metallic constructions; metallic prefabricated for construction; metallic armors for concrete.

Class 37: Construction services; building company services for construction; rental services of tools, machinery and equipment for construction and demolition; installation, mounting, disassembly, maintenance, repair and technical assistance services of covers, scaffolding, safety in construction and construction materials; advice on construction of buildings; assembly (installation) of construction; lifting of covers.

The contested goods and services are the following:

Class 6: Common metals and their alloys; metal building materials; metal panels; aluminium slabs; walls of metal; aluminium walls; ceilings of metal; ceilings of aluminium; eaves of metal; eaves of aluminium; bridges of metal; bridges of aluminium; transportable buildings of metal; framework scaffolding of metal; scaffolding of aluminium; platform steps for use with scaffolding; platform floors for use with scaffolding; scaffolding with folding platforms; mobile boarding stairs (metal -) for passengers; mobile boarding stairs of aluminium for passengers; mobile steps [ladders] of metal; mobile steps (ladders) of aluminium; metal ladders; ladders of aluminium; aluminium ladder rungs; ladder supports of metal; ladder supports of aluminium; ladder supports of metal; ladder stand-offs of aluminium; ladder hooks of metal; ladder hooks of aluminium; work platforms (scaffolding); work platforms (scaffold towers); materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes.

Class 35: Advertising; business management; business administration; office functions; publication of advertising texts; distribution of advertising material; promotional activities; publicity; business organisation, business economic and business administration consultancy; marketing services; market canvassing, market research and market analysis; business mediation in the purchase and sale, import and export, and wholesaling and retailing of common metals and their alloys, building materials, boards, walls, ceilings, eaves, bridges, transportable buildings of metal, scaffolding, platform steps for use with scaffolding, platform floors for use with scaffolding and scaffolding with folding platforms; business mediation in the purchase and sale, import and export, and wholesaling and retailing of mobile boarding stairs for passengers, mobile steps, ladders, ladder rungs, ladder stand-offs, ladder supports, ladder hooks, work platforms, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal and safes; organisation of events for commercial and advertising purposes; compilation and management of data files; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet.

Class 37: Building construction; repair of common metals and their alloys, building materials, boards, walls, ceilings, eaves, bridges, transportable buildings of metal, scaffolding, platform steps for use with scaffolding and platform floors for use with scaffolding; repair of scaffolding with folding platforms, mobile boarding stairs, mobile steps, ladders, ladder rungs, ladder stand-offs, ladder supports, ladder hooks, work platforms, materials of metal for railway tracks, non-electric metallic cable and threads, locksmithery, small items of metal hardware, pipes and tubes of metal and safes; installation services relating to common metals and their alloys, building materials, boards, walls, ceilings, eaves, bridges, transportable buildings of metal, scaffolding, platform steps for use with scaffolding and platform floors for use with scaffolding; installation services relating to scaffolding with folding platforms, mobile boarding stairs, mobile steps, ladders, ladder rungs, ladder stand-offs, ladder supports, ladder hooks, work platforms, materials of metal for railway tracks, non-electric metallic cable and threads, locksmithery, small items of metal hardware, pipes and tubes of metal and safes; scaffolding; scaffolding dismantling; scaffolding rental; rental of ladders; rental of ladders; information and consultancy relating to the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet.

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

Common metals and their alloys; metal building materials; materials of metal for railway tracks; safes are identically contained in both lists of goods in Class 6 (including synonyms and/or despite their somewhat different wording).

It should be noted, with regard to the abovementioned goods in Class 6 of the opponent, that there is a discrepancy between the wording in the original language of the earlier Spanish mark as filed by the opponent (that is, as regards the wording cajas de caudales), and its English translation as filed by the opponent (‘flow boxes’).

According to current Office practice, where a clearly incorrect translation is detected in the list of goods/services covered by the earlier national mark that prevents the Office from carrying out a comparison of goods/services, the opponent may be required under Article 26 EUTMIR to submit a certificate from a sworn or official translator confirming that the translation corresponds to the original; alternatively, in clear-cut cases, the Office may, for the purposes of the decision, replace a clearly incorrect translation of a certain term by a correct translation, adding an explanation to that effect.

In the present case, it is considered that the translation at issue is clearly incorrect (see Spanish Dictionary Real Academia Española online https://dle.rae.es/, defining it as ‘a reinforced box  in which you keep money or other valuable things’; (there are no hits on ‘flow box’, in inter alia Collins and Oxford English dictionaries online: https://www.collinsdictionary.com/spellcheck/english?q=flow+box and https://www.lexico.com/search?utf8=%E2%9C%93&filter=dictionary&dictionary=en&query=flow+box): therefore, it should read as ‘safes’ instead. It is thus considered that the opponent clearly referred to strongboxes where valuables can be kept safe, so-called ‘safes’ and that these goods are thus identically contained in both lists of goods in Class 6.

The same goes for the opponent’s translation of the Spanish term ‘cerrajeria’ as ‘locksmith’, which is clearly a orthographic error and should read as ‘locksmithery’ as well as of ‘ferreteria metalica’ as ‘hardware metal’ which, instead, should reversed so as to be read as ‘metal hardware’.

The contested transportable buildings of metal at least overlap with the opponent’s metallic transportable constructions. Therefore, they are considered identical.

The contested mobile boarding stairs (metal -) for passengers; mobile boarding stairs of aluminium for passengers are included in, or at least overlap with, the opponent’s broad category of metallic transportable constructions in Class 6. Therefore, they are identical.

The contested non-electric cables and wires of common metal are included in, or at least overlap with, the opponent’s cables and non-electrical metal wires in Class 6. Therefore, they are identical.

The contested ironmongery, small items of metal hardware are included in, or at least overlap with, the opponent’s locksmithery and metal hardware in the same Class. Therefore, they are identical.

The contested pipes and tubes of metal are included in, if not identical to, the opponent’s broader category tubes and pipes in Class 6. Therefore, these goods are considered identical.

As far as the remaining contested goods is concerned (namely: metal panels; aluminium slabs; walls of metal; aluminium walls; ceilings of metal; ceilings of aluminium; eaves of metal; eaves of aluminium; bridges of metal; bridges of aluminium; framework scaffolding of metal; scaffolding of aluminium; scaffolding with folding platforms; platform steps for use with scaffolding; platform floors for use with scaffolding; mobile steps [ladders] of metal; mobile steps (ladders) of aluminium; metal ladders; ladders of aluminium; aluminium ladder rungs; ladder supports of metal; ladder supports of aluminium; ladder supports of metal; ladder stand-offs of aluminium; ladder hooks of metal; ladder hooks of aluminium; work platforms (scaffolding); work platforms [scaffold towers]), these goods are all at least similar to the opponent’s metallic construction materials in Class 6, either because they are included in the broad category of, or overlap with, the opponent’s metallic construction materials, or because they are in any event often offered by the same producer, coincide in their usual relevant public and distribution channels and they are also complementary.

Contested services in Class 35

The contested services in this Class are clearly dissimilar to all the opponent’s goods and services in Classes 6 and 37. They are clearly different in nature from the applicant’s goods in Class 6. Furthermore, the contested services differ from the applicant’s goods and services in Classes 6 and 37 in their purpose. Their origin, method of use, distribution channels, relevant public and distribution channels do not coincide and they are neither complementary nor in competition with one another.

Indeed, the contested advertising; publication of advertising texts; distribution of advertising material; promotional activities; publicity; marketing services; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet are all services that intend to provide others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. The contested organisation of events for commercial and advertising purposes; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet consist of the arrangement of events to facilitate or encourage the promotion and sale of the client’s goods and services. These services are also normally provided by specialised companies in their specific field.

The contested business management services; market canvassing, market research and market analysis; business organisation, business economic consultancy; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. The contested office functions; compilation and management of data files; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information in computer databases, invoicing, and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. The contested business administration; business administration consultancy; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet comprise services intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation. They consist of organising people and resources efficiently so as to direct activities toward common goals and objectives.

The contested business mediation in the purchase and sale, import and export, and wholesaling and retailing of common metals and their alloys, building materials, boards, walls, ceilings, eaves, bridges, transportable buildings of metal, scaffolding, platform steps for use with scaffolding, platform floors for use with scaffolding and scaffolding with folding platforms; business mediation in the purchase and sale, import and export, and wholesaling and retailing of mobile boarding stairs for passengers, mobile steps, ladders, ladder rungs, ladder stand-offs, ladder supports, ladder hooks, work platforms, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal and safes; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet in Class 35 are specific services which are provided by specialist companies to other companies. Even though the subject matter of at least some of these services inter alia include the opponent’s goods, the Office considers this is insufficient for finding similarity between the goods and services in question. The nature of these services is fundamentally different from the manufacture of goods. In addition, none of the goods and services covered by the earlier mark present relevant similarities with these contested services in Class 35. Their purposes are different, as well as their methods of use. They do not share distribution channels, or the same usual providers/producers. Their end users are also different. They are not in competition. Therefore, the contested services are considered dissimilar to all the opponent’s goods and services.

Contested services in Class 37

The contested building construction; information and consultancy relating to the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet are included in, or at least overlap with, the opponent’s broad category of construction services in Class 37. Therefore, these services are considered identical.

The contested scaffolding rental; rental of ladders; rental of ladders are included in, or overlap with, the opponent’s rental services of tools, machinery and equipment for construction in Class 37. Therefore, they are considered identical.

The contested repair of common metals and their alloys, building materials, boards, walls, ceilings, eaves, bridges, transportable buildings of metal, scaffolding, platform steps for use with scaffolding and platform floors for use with scaffolding; repair of scaffolding with folding platforms, mobile boarding stairs, mobile steps, ladders, ladder rungs, ladder stand-offs, ladder supports, ladder hooks, work platforms, materials of metal for railway tracks, non-electric metallic cable and threads, locksmithery, small items of metal hardware, pipes and tubes of metal; information and consultancy relating to the aforesaid services can be held at least similar to the opponent’s maintenance, repair and technical assistance services of scaffolding and construction materials or construction services in Class 37. This is because either they are identically included (despite a slightly different wording) in, or at least overlap with, the opponent’s broader categories of services, or because they may be offered by the same producer, coincide in their usual relevant public and distribution channels and they are also complementary.

The contested repair of safes; information and consultancy relating to the aforesaid services can be held similar to the opponent’s ‘safes’ in Class 6. When comparing these contested services with the opponent’s goods, despite their obviously different nature (services versus goods), it must be noted that they may coincide in their producers/providers, target the same end user and are likely to share distribution channels. Furthermore, as it is common in the market for companies specialised in manufacturing safes to also provide repair and information services about such goods, these goods and services are also complementary. Therefore, the Opposition Division finds these goods and services under comparison similar.

The contested installation services relating to common metals and their alloys, building materials, boards, walls, ceilings, eaves, bridges, transportable buildings of metal, scaffolding, platform steps for use with scaffolding and platform floors for use with scaffolding; installation services relating to scaffolding with folding platforms, mobile boarding stairs, mobile steps, ladders, ladder rungs, ladder stand-offs, ladder supports, ladder hooks, work platforms, materials of metal for railway tracks, non-electric metallic cable and threads, locksmithery, small items of metal hardware, pipes and tubes of metal and safes; scaffolding; scaffolding dismantling; information and consultancy relating to the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet are at least similar to the opponent’s installation, mounting, disassembly and technical assistance services of covers, scaffolding and construction materials or to the earlier construction services in Class 37. This is because either they are identically included (despite a slightly different wording) in, or at least overlap with, the opponent’s broader categories of services, or because they may be offered by the same producer, and may coincide in their relevant public and distribution channels.

b) 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 at least an average degree) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention varies from average to high, depending on, inter alia, the nature, the price and the frequency of purchase of the goods and services.

c) The signs

	ALUMEXX
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

In this respect, the earlier mark is a figurative mark, consisting of the verbal element ‘ALUMED’ in a somewhat stylised, black and dark blue font, depicted above the verbal component ‘ALUMINIUM SYSTEMS’ which is in a much smaller, grey typeface. Before the element ‘ALUMED’, a black circle is placed in which an abstract black and blue device is depicted: the latter, upon a closer look, could be seen as the letters ‘A’ (somewhat stylised) and ‘M’ placed one above the other. The element ‘ALUMED’, on account of its size and position, is clearly the dominant element (visually eye-catching) of the earlier mark.

It cannot be excluded that the common element ‘ALUM(E)’ may be perceived by a part of the relevant public as alluding to the Spanish term ‘aluminio’ (in English, ‘aluminum’) that starts with the same letters; nevertheless, the verbal elements ‘ALUMED’ and ‘ALUMEXX’, including their respective endings ‘-D’ and ‘-XX’, are meaningless as a whole and can be in any event considered of normal distinctiveness. It can be indeed reasonably assumed that at least part of the Spanish public, whether professionals or the general public, will perceive them as indivisible units which may allude to something that may contain, or relate to, ‘aluminium’, but are sufficiently fanciful as a whole in relation to all the goods and services at hand. Their combination is thus such that the resulting invented words will be perceived as a whole, that is - will not artificially be split, by at least part of the relevant public. Indeed, the consumer normally perceives a sign as a whole and does not proceed to analyse its various details.

The second verbal component of the earlier mark, ‘ALUMINIUM SYSTEMS’, is likely to be understood by the public as these English terms are highly similar to the equivalent Spanish terms (‘aluminio’, ‘sistemas’) but they are depicted in such a small size that they are either to be considered negligible, on account of their size and position (as they will easily go unnoticed) or, in any event, clearly have secondary positions within the contested sign that is dominated by the verbal element ‘ALUMED’.

As regard the figurative component of the earlier mark, in principle, when signs consist of both verbal and figurative components, 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). In the case at hand the figurative aspects of the earlier mark (the font and colours of its verbal components and the abstract figurative circular device) will most likely be perceived as being of a rather decorative nature; therefore, they are also secondary and will have, at best, limited impact.

Also, account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, and from above to below, which makes the part placed at the left of, or above in, the sign (the initial or upper part) the one that first catches the attention of the reader.

Therefore, it is undoubtedly the element ‘ALUMED’ of the earlier mark that will have the most impact on consumers.

Conceptually, neither of the signs has a meaning as a whole. Although, as seen above, it cannot be excluded that both signs may bring to mind for part of the public the same concept of ‘aluminium’, this is however, at most, of reduced distinctiveness in relation to the goods and services, so that the signs are at best conceptually similar to a very low degree. Bearing in mind the above considerations, for another significant part of the public a conceptual comparison is not possible, so that the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the letters ‘ALUME*(*)’. The signs differ in the ending of the contested sign, namely a repetition of the letter ‘X’ (‘XX’) and in the last letter of the first verbal element of the earlier mark (‘-D’) as well as in the secondary expression ‘ALUMINIUM SYSTEMS’ and the decorative figurative aspects of the earlier mark; it is however important to note that these difference and the decorative figurative elements have a much lesser visual impact than the shared five-letter sequence which forms almost the entire contested sign and the earlier mark’s first and dominant verbal component, and which is overwhelming.

Therefore, the signs are similar to a higher than average degree.

Aurally, the pronunciations of the signs coincide in the sound of the letters ‘ALUME/’. The main difference will merely result from the fact that the contested sign contains the sound of the penultimate letter(s) ‘XX’ vs the ending letter ‘D’ in the first and dominant verbal element of the earlier mark, and this difference is not a major one. As to the additional secondary expression ‘ALUMINIUM SYSTEMS’ in the earlier mark, this component is visually less eye-catching and, if pronounced at all, will in any event have less impact.

Indeed, taking into account that the additional expression has a secondary position within the earlier mark and that consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T-477/10, SEⓒSports Equipment, EU:T:2011:707, § 55; 09/04/2013, T-337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLR-G5 (fig.) / Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 et al., EU:T:2016:571, § 56), it is highly probable that a significant proportion of the relevant consumers will omit this additional expression when referring to the earlier mark.

Furthermore, the contested sign ‘ALUMEXX’ and the earlier mark’s dominant and first element ‘ALUMED’ have the same structure (one word) and almost the same number of sounds of which all but one coincide.

Therefore, the signs are considered to be aurally similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must in any event be seen as normal, despite the presence of - if perceived -, a possibly weak or even non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The signs show striking similarities both from a visual and aural perspective.

Account is taken of the fact that consumers, professional or not, 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). 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).

Admittedly, there are certain differences between the signs. However, their impact is not such as to enable a part of the public, whether the public at large or professionals, to safely distinguish between them in the context of goods and services that are identical or similar.

Considering all the above, the Opposition Division concludes that the differences between the signs are insufficient to counteract their similarity on account of the identical letters, in the same position (A-L-U-M-E-[*]) out of (all but one of) the letters of which (i) the entire contested sign, and (ii) the first and dominant element of the earlier mark, are composed.

In its observations of 07/12/2018, the applicant has argued that within the European Union alone there have been filed over two thousand trade marks containing the string of letters ‘ALU -’ for goods in Class 6 so that this prefix lacks distinctiveness. The Opposition Division notes that in any event, 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 register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the applicant, in the absence of any evidence filed in this regard, did not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘ALU-‘. Under these circumstances, the applicant’s claim must be set aside.

Consequently, it must be held that, given the overall impression created by the conflicting signs, the identity and similarity of the services concerned and also taking into account the imperfect recollection and interdependence principles, a likelihood of confusion between the signs on the part of the relevant public (even if highly attentive professionals) pursuant to Article 8(1)(b) EUTMR cannot be safely ruled out.

Considering all the above, 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 Spanish trade mark registration No 3 604 554 compared above.

It follows that the contested sign must be rejected for all the contested goods and services found to be identical or similar to those of the earlier Spanish trade mark No 3 604 554.

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.

The opposition is also based on the opponent’s earlier Spanish trade mark registration No 2 691 934 solely covering goods in Class 6, in particular the same goods as compared above, in addition to the vague term metal products not included in other classes, in Class 6. This mark is identical to the one which has been compared above while the only additional goods clearly cannot be held more similar to the applicant’s goods and services than those of the opponent already compared above. Therefore, the outcome cannot be different with respect to the services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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

Justyna GBYL

Edith Elisabeth VAN DEN EEDE

Francesca CANGERI SERRANO

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.