OPPOSITION No B 2 813 502

Knauf S.A.S., Rue Principale Z.A., 68600 Wolfgantzen, France (opponent), represented by Office Kirkpatrick N.V./S.A., Avenue Wolferslaan, 32, 1310 La Hulpe - Terhulpen, Belgium (professional representative)

a g a i n s t

Polirtlak d.o.o., Štihova ulica 10, 1000 Ljubljana, Slovenia (applicant), represented by Thorsten Meyer, Pfarrer-Schultes-Weg 14, 89077 Ulm, Germany (professional representative).

On 14/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 813 502 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods and services of European Union trade mark application No 15 720 618 (word mark: ‘POLIRTLAK’), namely against all the goods and services in Classes 1, 17, 19, and 37. The opposition is based on French trade mark registrations No 1 458 338 (figurative mark: ) and No 3 348 241 (word mark: ‘POLYPLAC SNOWBOARD’). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 French trade mark registration No 1 458 338 (figurative mark: ).

1. The goods and services

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

Class 19: Panels for façades and curtain walls, insulating coverings, prefabricated partitions and building materials.

The contested goods and services are the following:

Class 1: Adhesives for floor, ceiling and wall tiles; glues for industrial purposes.

Class 17: Waterproof sealant compounds for joints; polymer sealant for use in connection with the installation of flooring; weatherstripping compositions for use in building and repairing concrete floors and tiled floors; acrylic weatherstripping compositions; compounds for filling in joints; sealing and insulating materials; acrylic resins as semi-finished products; synthetic resins as semi-finished products; putty for filling in pores of concrete floors.

Class 19: Non-metal building materials, namely, dry mixtures for building and repairing concrete floors; concrete patching compounds for floors; tar; pitch; tar, namely, tar used in construction of concrete surfaces; non-metal floor tiles; cladding, not of metal, for building.

Class 37: Construction consultation; building construction and repair; providing services relating to application of epoxy coatings to floors of buildings as part of building construction and repair; polishing of concrete floors of buildings as part of building construction and repair; construction and repair of concrete floors and tiled floors.

Some of the contested goods and services are identical to goods on which the opposition is based. For example, all of the contested goods in Class 19 are included in the broad category of the opponent’s building materials and are, therefore, identical. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical at the directed at professional customers with specific professional knowledge or expertise and at the general consumer.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

	POLIRTLAK
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).

The earlier mark is a figurative mark that is composed of the verbal element ‘PolyPlac’, which is represented in a fairly basic black typeface, the letters of which are joined together. The figurative aspect of the mark is merely decorative and therefore non distinctive.

‘PolyPlac’ as such has no meaning in French and is distinctive. However, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46,§57). In the present case, the depiction of the two letters ‘P’ in upper case contributes to the identification of the two elements forming the earlier mark, ‘Poly’ and ‘Plac’.

With this in mind, ‘Poly’ is a prefix meaning ‘many’ in French (as in English), and will be recognised by the French public. This has no clear meaning in relation to the goods and so is distinctive.

‘Plac’ as such has no meaning in French, but it sounds exactly like the French word ‘Plaque’, which means ‘sheet’ or ‘plate’ and it will, therefore, be associated with these meanings. It is considered weak for those goods that can be presented in sheet format.

The contested sign is the word mark ‘POLIRTLAK’, which has no meaning in French and so is distinctive. Since it is a word mark, the word as such is protected and, therefore, it is irrelevant if it is depicted in upper or lower case letters.

Visually, the signs coincide in the letters ‘POL’ at the beginning of the signs and ‘LA’ towards the end. They differ in the middle part, ‘yP’ of the earlier mark and ‘IRT’ of the contested sign. They differ also in their endings, ‘c’ of the earlier mark and ‘K’ (unusual in French) of the contested sign and in the typeface and use of upper and lower case of the earlier mark.

Therefore they are visually similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛POLI/Y, at the beginning of the signs and ‘LAC/K’ at the end. The pronunciation differs in the sound of the letters ‘P’ of the earlier mark and ‘RT’ of the contested sign.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 clear meaning in relation to the goods in question. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element as explained in section c) of the present decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

According to the case law of the Court of Justice, 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, § 22 et seq.).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

In the present case, the goods and services are assumed to be identical. The signs are visually similar to a below average degree, aurally similar to an above average degree and not conceptually similar. The relevant public is formed by the public at large and business customers with a degree of attention that varies from average to high. The earlier mark as a whole has a normal degree of distinctive character.

It is true that, as argued by the opponent, the consumer often attaches importance to the first part of trade marks, which coincides to a certain extent in this case. However, the consumer will attach meanings to the elements forming the earlier mark, as explained above, while the contested sign is meaningless. The contested mark also contains the letter ‘K’ at the end, which is unusual in French and therefore striking. These differences are sufficient to overcome the aural similarities and rule out a likelihood of confusion on the part of both the general public and the professional public, regardless of the degree of attention.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opponent has also based its opposition on the following earlier trade mark: French trade mark registration No 3 348 241 for the word mark ‘POLYPLAC SNOWBOARD’ for Classes 17 and 19.

This other earlier right invoked by the opponent is, however, less similar to the contested sign. This is because it contains an additional word, ‘SNOWBOARD’, which is not present in the contested sign. Therefore, the outcome cannot be different.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tobias KLEE

Lynn BURTCHAELL

Marta GARCÍA COLLADO

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.