OPPOSITION No B 2 899 253

Sekisui Alveo AG, Bahnhofstr. 7, 6002 Luzern, Switzerland (opponent), represented by Società Italiana Brevetti S.p.A., Corso dei Tintori, 25, 50122 Firenze, Italy (professional representative)

a g a i n s t

Alveco SRL, Via Passerini 13, 20900 Monza, Italy (applicant), represented by Dott. Franco Cicogna & C.SRL, Via Visconti di Modrone 14/A, 20122 Milano, Italy (professional representative).

On 16/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 899 253 is partially upheld, namely for the following contested goods:

Class 17: Rubber, and substitutes for this material; plastics in extruded form for use in manufacture; flexible pipes, not of metal; insulation sheets; semi-finished polyamide resins in the form of sheets; packing foam in sheet form; plastics materials in the form of plates [semi-finished products]; heat resistant coatings in the form of ceramic plates; lightweight mineral wool slabs for acoustic insulation purposes; lightweight mineral wool slabs for thermal insulation purposes; lightweight mineral wool slabs for fire insulation purposes; elastomeric polymers in the form of sheets for use in manufacture; extruded plastics in the form of sheets for use in manufacture; sound-absorbing wall coverings; sound-damping wall coverings; expansion joints for use in wall constructions; resins for use in forming a hardened skin on walls; resins for use in forming a dust proof skin on walls; insulation articles for use on splices of electric cables; insulation articles for use on terminations of electric cables; dielectric barriers; paper for electrical capacitors; range spacers for high tension insulators; rubber for electrical insulation; insulating wrap for the electrical shielding of cables; electrical insulators; electrical insulating rubber products; quilted wadding articles for insulation; thermal insulating articles; quilted textile articles for insulation; barriers for protection against heat; quilted blankets for insulating; rubber for heat insulation; insulation jackets for industrial pipes; thermal insulating material of plastics; non-conducting materials for retaining heat; polyester; semi-processed resins; plastic sheet materials for use in manufacture; foils of cellulose for use in manufacture; semi-worked plastic substances; regenerated fiber thread not for textile use; mineral fibers; elastomers; carbon fibre; artificial balata; chemical fibres not for textile use; synthetic fibres, other than for textile use.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; paving slabs, not of metal; concrete slabs; clay slabs; concrete slabs; slate slabs; boards of gypsum plaster; mortar slabs; stone slates; cement slabs; glass panels; natural stone slabs; glass in sheet form for use in doors; roofing plate (non-metallic -); glass in sheet form for use in windows; cement mortar slates; slabs, not of metal, for building; glass slabs for use in building; building panels, not of metal; gypsum boards for construction purposes; plate glass [windows] for building; slates for roof cladding; concrete road pavement boards; slates for wall cladding; wired plate glass for building; roofing boards (non-metallic -) having insulating properties; sheet glazing materials for use in building; facade cladding sheets of mortar coated foamed materials; walls (non-metallic -); non-metal wainscotting; non-metal curtain walls; partitions, not of metal; plastic wallboards.

2. European Union trade mark application No 16 376 212 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 376 212 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 9 177 718 for the word mark ‘Alveo’. The opponent invoked Article 8(1)(b) EUTMR.

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 9 177 718 for the word mark ‘Alveo’, as it has the broadest scope of protection.

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, inter alia, European Union trade mark registration No 9 177 718 for the word mark ‘Alveo’.

The date of filing of the contested application is 16/02/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 16/02/2012 to 15/02/2017 inclusive.

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

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 17: Flexible foamed plastics [semi-processed]; flexible foamed plastics for insulation; foamed plastics boards [semi-finished]; foamed plastics in extruded form for use in manufacture; foamed plastics materials in the form of blocks for use in manufacture; foamed plastics materials in the form of sheets for use in manufacture; foamed plastics panels for use in manufacture; insulating materials made of foamed plastics.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 07/02/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 12/04/2018 to submit evidence of use of the earlier trade mark. This deadline was extended until 12/06/2018. On 11/06/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Exhibit 1: printouts from Siksui Alveo’s website www.alveo.com, dated 15/01/2017, showing various pictures, such as

The printouts are in Italian (no translation attached) and show the mark ‘Alveo’.

Exhibit 2: a corporate brochure entitled ‘Innovation in foam’ (edition 3/2016) presenting the opponent’s products for 2017. The mark is shown. The brochure shows various pictures of the opponent’s products and their characteristics - for example adhesive coating and flooring for the transportation, industrial and construction sector – such as and . The products consist of roll foam, block foam, etc. The document is bilingual (English and Italian). This catalogue also gives a description of the company’s history, as follows:

Sekisui Alveo was founded in 1971. In 1973 the company was acquired by the Japanese Sekisui Chemical Company Ltd., a global chemical group with over 20,000 employees. Sekisui operates foam manufacturing plants in Europe, Australia, China, Japan, South Korea, Thailand, and the USA. The head office of Sekisui Alveo is in Lucerne, Switzerland. The European production plants are in Roermond, Netherlands; Bad Sobernheim, Germany; and Merthyr Tydfil, Wales, GB. We maintain local offices throughout Europe and in South America to be as close as possible to our customers. With some 500 employees, Sekisui Alveo produces over 15,000 tonnes of polyolefin foams per year. As a part of the Sekisui Group, our global reach and resource directly benefits our broad range of customers. Sekisui Alveo specialises in the development, production and distribution of high-quality polyolefin foams. Our company is known as an innovation driver in the field of foam technology. Amongst our innovative and unique products are e.g. the world’s thinnest polyolefin foams, products with outstanding noise-absorption properties, and foams with halogen-free flame-resistance. Our unique products in the areas of temperature-resistant Soft-Touch foams, food packaging materials, and insulation materials for building construction are patented. Focus on development of applications with environmental benefits (e.g. energy-saving thermal insulation, ultra-light automotive components).

The following pictures appear:

Exhibit 3: a general construction leaflet in English, dated September 2011, showing the mark ‘ALVEO’, as and entitled: ‘Alveo Construction, The future of construction’. The leaflet mentions various functions of the foams in construction, such as thermal and acoustic insulation and sealing against water, moisture, air, dust, damping or shock absorption. The thermal insulation is for tunnel, thermal, corrugated roof, tube and air duct insulations and expansion cushion. The acoustic insulation is for floating floors, parquet underlay, impact sound insulation, edge strips, tram/railway profiles, filler blocks, separation joints, sill seals and sports fields (shockpad alveosport). The opponent suggests reviewing the information found at http://www.sekisuialveo.com/fileadmin/user/upload/business units/CO/Gener al Construction Leaflet.pdf;

Exhibit 4: a review of turnover figures for the sale of goods under the trade mark ‘ALVEO’ in Italy, Germany, Spain, France, the United Kingdom and the Netherlands from 01/2012 to 06/2018 (the figures are in tonnes) and are quite substantial. This exhibit also contains a affidavit in English executed by Mr O. B., Business Unit Manager ICO at Sekisui Alveo AG in Switzerland. This mentions that the opponent uses the trade mark ‘ALVEO’ in connection with a broad range of high-quality foams, notably flexible foamed plastics [semi-processed]; flexible foamed plastics for insulation; foamed plastics boards [semi-finished]; foamed plastics in extruded form for use in manufacture; foamed plastics materials in the form of blocks for use in manufacture; foamed plastics materials in the form of sheets for use in manufacture; foamed plastics panels for use in manufacture; insulating materials made of foamed plastics and building materials (non-metallic). In this affidavit, Mr B. includes a table with the amounts of foams (in tonnes) sold from 2012 to June 2018:

Germany	Spain	France	UK	Italy	Netherlands	Total
49,382.8	3,223.3	5,906	7,707.3	9,561.9	4,223.1	80,004.5

Exhibit 5: leaflets for ‘ALVEOBLOC’ and ‘Capseals’, all in English and dated 3/2013, 8/2012, 3/2013, respectively. The trade mark ‘ALVEO’ is on their cover pages and the documents are entitled: ‘Alveobloc standard types simply clever – on short notice’ and ‘Seals made of Alveolit and Alveocel’. There is a description of the characteristics of the products and pictures of them.

Exhibit 6: a leaflet on ‘Energy-Efficient Buildings’, in English (dated 7/2011) and Italian (dated 1/2013). The trade mark ‘ALVEO’ is on the cover page and the leaflet is entitled: ‘Sekisui Alveo foams – tape carriers for energy-efficient buildings’. There is a description of the products’ characteristics and some pictures of them. The opponent suggests reviewing the information found at http://www.sekisuialveo.com/fileadmin/user/upload/business/units/AC/Energy-efficient buildings Leaflet I.pdf;

Exhibit 7: a leaflet entitled: ‘Polyolefin foams for sealing and insulation’ in English, dated 3/2013. The trade mark ‘ALVEO’ is on the cover page. There is a description of the products’ characteristics and some pictures of them.

Exhibit 8: a document containing what appear to be the product descriptions for the trade marks used by the opponent, such as: ‘ALVEOLEN’, ‘ALVEOLUX’, ‘ALVEOCEL’ and ‘ALVEOLIT’, dated 7/2008, 2/2017, 1/2011 and 1/2008, respectively. These trade marks all have their root ‘ALVEO-‘ in common;

Exhibit 9: 44 copies of invoices and delivery notes addressed to various companies in Italy, Germany, Spain, the United Kingdom, France and the Netherlands dated 2012 to 2017 for considerably high sales (the abbreviations used in the product descriptions refer to the various kinds of ‘ALVEO’ products). They are in German and Italian, and in the upper right corner the mark appears. The product description refers to the abbreviation used in the product descriptions (i.e.: “TA” = Alveolit standard type; “NA” = Alveolen standard type” and “NE” = Alveolen soft and elastic).

Assessment of the evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the trade mark for the relevant goods and/or services.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI/ Stratégies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate, but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory, which will be described in more detail detail.

The evidence shows that the places of use are several EU countries, for example Germany, Spain, France, the United Kingdom, Italy and the Netherlands. This can be inferred from the language of the documents (English and Italian), from the table mentioned in the affidavit and from the addresses on the invoices. Therefore, the place of use is sufficiently proven.

The vast majority of the evidence submitted by the opponent, such as the brochures, leaflets, turnover figures and invoices, are dated within the relevant period. Therefore, the evidence of use filed by the opponent contains sufficient indications concerning the time of use. Moreover, the opponent has submitted documents covering almost the whole period and the use is quite evenly divided over this period.

The evidence, in particular the turnover figures, confirmed by the affidavit, and the 44 invoices, showing quite considerable sales, provides sufficient information regarding the extent of use of the mark. There are sufficient indications in the evidence in relation to the commercial volume, duration and frequency of use.

The earlier mark ‘Alveo’ is a word mark. However, on some documents, the mark appears in a bold red fairly standard typeface, for example as or as the signs ‘ALVEOCEL’, ‘ALVEOSOFT’, ‘ALVEOBLOC’, ‘ALVEOLIT’, ‘ALVEOLUX’, etc.

Nevertheless, Article 18(1), second subparagraph, point (a) EUTMR, mentions that use of the mark in a form different from the one registered still constitutes use of the trade mark, as long as it does not alter the distinctive character of the trade mark. This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50). Furthermore, additions do not per se alter the distinctive character of a mark. Indeed, if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36). However, the addition of a figurative element can alter the distinctive character of a mark if this figurative element is not seen as a mere decorative element, but is dominant and distinctive in the overall impression of the mark.

The alterations are confined to the slight stylisation and different colour (red) of the script, and the letter ‘A’ to its left (which is also the first letter of the word ‘ALVEO’), as well as the slogan ‘INNOVATION IN FOAM’ underneath and in a much smaller script. These differences do not constitute an alteration of the distinctive character of the word mark ‘Alveo’, since the scope of protection of a word mark covers depictions in different typefaces and/or colours. Furthermore, the word ‘ALVEO’ is clearly more dominant and distinctive compared to the slogan ‘INNOVATION IN FOAM’ and the letter ‘A’ is just a repetition of the first letter of the word ‘ALVEO’. As regards the other trade marks that are also mentioned, such as ‘ALVEOCEL’, ‘ALVEOSOFT’, ‘ALVEOLUX’, ‘ALVEOBLOC’, ‘ALVEOLIT’, the main root of all these marks is ‘ALVEO’, which is followed by a descriptive characteristic of the product, such as ‘BLOC’ (meaning that the insulation material is delivered in blocks), ‘CEL’ (probably a technical characteristic of the products), ‘SOFT’ (meaning that the products are made from softer insulation material) or ‘LUX’ (meaning that the products are of a higher grade than other products). In this regard the opponent also pointed out in its observations that when reviewing the catalogues, invoices and other documents submitted, the trade mark ‘ALVEO’ was always used in connection with the relevant goods. The trade marks ‘ALVEOLIT’, ‘ALVEOLEN’, ‘ALVEOCEL’, ‘ALVEOSOFT’ and ‘ALVEOBLOC’ are all trade marks derived from the trade mark ‘ALVEO’ plus a descriptive suffix, which concur to prove the use of the ‘ALVEO’ trade mark. Furthermore, the general mark ‘ALVEO’ is mentioned in all the documents.

Taken as a whole, the evidence submitted is sufficient to prove use of the mark on which the opposition is based in a form which does not substantially alter its distinctive character.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

The earlier mark is registered for various goods in Classes 17 and 19, namely for:

Class 17: Flexible foamed plastics [semi-processed]; flexible foamed plastics for insulation; foamed plastics boards [semi-finished]; foamed plastics in extruded form for use in manufacture; foamed plastics materials in the form of blocks for use in manufacture; foamed plastics materials in the form of sheets for use in manufacture; foamed plastics panels for use in manufacture; insulating materials made of foamed plastics.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; Monuments, not of metal.

The Opposition Division will now assess which goods the opponent has proven use for in the different classes.

Class 17

The evidence shows that the opponent used the mark in relation to all its goods in this class.

Class 19

The opponent provided proof of use of the trade mark only for building materials (non-metallic). Furthermore, the affidavit refers only to these goods and does not mention the remaining goods in this class.

Moreover, the opponent failed to submit sufficient evidence or any proper reasons for non-use in relation to the remaining goods in Class 19, since none of these were mentioned in any of the documents.

Therefore, the Opposition Division will only consider the abovementioned goods, for which use is considered to have been proven, in its further examination of the opposition. As only some of the goods are used, only these should be taken into account.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

The goods on which the opposition is based, and for which use has been proven, are the following:

Class 17: Flexible foamed plastics [semi-processed]; flexible foamed plastics for insulation; foamed plastics boards [semi-finished]; foamed plastics in extruded form for use in manufacture; foamed plastics materials in the form of blocks for use in manufacture; foamed plastics materials in the form of sheets for use in manufacture; foamed plastics panels for use in manufacture; insulating materials made of foamed plastics.

Class 19: Building materials (non-metallic).

The contested goods, after a limitation by the applicant on 25/05/2018, are the following:

Class 17: Rubber, gutta-percha, gum, unworked or semi-worked mica, and substitutes for all these materials; plastics in extruded form for use in manufacture; flexible pipes, not of metal; insulation sheets; semi-finished polyamide resins in the form of sheets; packing foam in sheet form; plastics materials in the form of plates [semi-finished products]; heat resistant coatings in the form of ceramic plates; lightweight mineral wool slabs for acoustic insulation purposes; lightweight mineral wool slabs for thermal insulation purposes; lightweight mineral wool slabs for fire insulation purposes; elastomeric polymers in the form of sheets for use in manufacture; extruded plastics in the form of sheets for use in manufacture; sound-absorbing wall coverings; sound-damping wall coverings; expansion joints for use in wall constructions; resins for use in forming a hardened skin on walls; resins for use in forming a dust proof skin on walls; insulation articles for use on splices of electric cables; insulation articles for use on terminations of electric cables; dielectric barriers; paper for electrical capacitors; range spacers for high tension insulators; rubber for electrical insulation; insulating wrap for the electrical shielding of cables; electrical insulators; electrical insulating rubber products; quilted wadding articles for insulation; thermal insulating articles; quilted textile articles for insulation; barriers for protection against heat; quilted blankets for insulating; rubber for heat insulation; insulation jackets for industrial pipes; thermal insulating material of plastics; non-conducting materials for retaining heat; polyester; semi-processed resins; plastic sheet materials for use in manufacture; foils of cellulose for use in manufacture; semi-worked plastic substances; regenerated fiber thread not for textile use; mineral fibers; elastomers; carbon fibre; artificial balata; chemical fibres not for textile use; synthetic fibres, other than for textile use.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; paving slabs, not of metal; concrete slabs; clay slabs; concrete slabs; slate slabs; boards of gypsum plaster; mortar slabs; stone slates; cement slabs; glass panels; natural stone slabs; glass in sheet form for use in doors; roofing plate (non-metallic -); glass in sheet form for use in windows; cement mortar slates; slabs, not of metal, for building; glass slabs for use in building; building panels, not of metal; gypsum boards for construction purposes; plate glass [windows] for building; slates for roof cladding; concrete road pavement boards; slates for wall cladding; wired plate glass for building; roofing boards (non-metallic -) having insulating properties; sheet glazing materials for use in building; facade cladding sheets of mortar coated foamed materials; walls (non-metallic -); non-metal wainscotting; non-metal curtain walls; partitions, not of metal; plastic wallboards.

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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 17

The contested plastics in extruded form for use in manufacture; plastic sheet materials for use in manufacture include, as broader categories, or overlap with, the opponent’s foamed plastics in extruded form for use in manufacture. 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 insulation sheets include, as a broader category, the opponent’s insulating materials made of foamed plastics. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested semi-finished polyamide resins in the form of sheets; packing foam in sheet form; elastomeric polymers in the form of sheets for use in manufacture; extruded plastics in the form of sheets for use in manufacture; polyester; semi-processed resins; foils of cellulose for use in manufacture overlap with the opponent’s foamed plastics materials in the form of sheets for use in manufacture. Therefore, these are identical.

The contested plastics materials in the form of plates [semi-finished products]; semi-worked plastic substances overlap with the opponent’s foamed plastics boards [semi-finished]. Therefore, these are identical.

The contested rubber, and substitutes for all this material; heat resistant coatings in the form of ceramic plates; lightweight mineral wool slabs for acoustic insulation purposes; lightweight mineral wool slabs for thermal insulation purposes; lightweight mineral wool slabs for fire insulation purposes; sound-absorbing wall coverings; sound-damping wall coverings; insulation articles for use on splices of electric cables; insulation articles for use on terminations of electric cables; dielectric barriers; paper for electrical capacitors; range spacers for high tension insulators; rubber for electrical insulation; insulating wrap for the electrical shielding of cables; electrical insulators; electrical insulating rubber products; quilted wadding articles for insulation; thermal insulating articles; quilted textile articles for insulation; barriers for protection against heat; quilted blankets for insulating; rubber for heat insulation; insulation jackets for industrial pipes; thermal insulating material of plastics; non-conducting materials for retaining heat; regenerated fiber thread not for textile use; mineral fibers; elastomers; carbon fibre; artificial balata; chemical fibres not for textile use; synthetic fibres, other than for textile use are included in the broad category of, or overlap with, the opponent’s insulating materials made of foamed plastics. Therefore, these are identical.

The contested flexible pipes, not of metal; expansion joints for use in wall constructions; resins for use in forming a hardened skin on walls; resins for use in forming a dust proof skin on walls are highly similar to the opponent’s building materials (non-metallic) in Class 19, since they coincide in nature and purpose.

The contested gutta-percha, gum, unworked or semi-worked mica, and substitutes for all these materials are dissimilar to the opponent’s goods in Classes 17 and 19. These goods have a different nature, purpose and method of use. They are neither complementary nor in competition with each other. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public. Even though these goods are all sold in DIY-shops and the like, this does not mean that they are similar, since they are normally used for other purposes.

Contested goods in Class 19

Building materials (non-metallic) are identically contained in both lists of goods.

The contested non-metallic rigid pipes for building; asphalt, pitch and bitumen; paving slabs, not of metal; concrete slabs; clay slabs; concrete slabs; slate slabs; boards of gypsum plaster; mortar slabs; stone slates; cement slabs; glass panels; natural stone slabs; glass in sheet form for use in doors; roofing plate (non-metallic -); glass in sheet form for use in windows; cement mortar slates; slabs, not of metal, for building; glass slabs for use in building; building panels, not of metal; gypsum boards for construction purposes; plate glass [windows] for building; slates for roof cladding; concrete road pavement boards; slates for wall cladding; wired plate glass for building; roofing boards (non-metallic -) having insulating properties; sheet glazing materials for use in building; facade cladding sheets of mortar coated foamed materials; walls (non-metallic -); non-metal wainscotting; non-metal curtain walls; partitions, not of metal; plastic wallboards are included in the broad category of the opponent’s building materials (non-metallic). Therefore, these are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or highly similar are directed at both the public at large (i.e. DIY-enthusiasts) and at business customers with specific professional knowledge or expertise in, for example, the field of construction.

The degree of attention varies from average to above average depending on the price, frequency of purchase, (specialised) nature and conditions of the goods. Some of these products may have an important impact on the construction of buildings, while others are merely replacement articles bought by DIY -enthusiasts.

3. The signs

Alveo
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 the word mark ‘Alveo’. The protection of a word mark concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison of a word mark, if it is written in upper- or lower-case letters or a combination thereof.

The contested sign is a figurative mark, consisting of the word ‘ALVECO’, written in a slightly stylised standard upper-case font. Even though the horizontal line of the first letter ‘A’ is missing, consumers would clearly perceive this letter as it is very similar to the letter ‘A’. The same applies to the letter ‘E’. The last letter ‘O’ has some fanciful shading inside. The applicant argued, in its observations, that the contested sign was highly stylised and that the marks had to be considered visually dissimilar. The Opposition Division does not agree with this argument. The consumer will clearly perceive the word ‘ALVECO’ in the sign for the aforementioned reasons. Therefore, the applicant’s argument has to be set aside.

For at least the vast majority of the public both the earlier mark and the contested sign are meaningless terms and have a normal degree of distinctiveness for the relevant goods. As regards the different patterns inside the letter ‘O’ in the contested sign, these serve rather a decorative purpose and will have a limited impact on the overall comparison.

Visually and aurally, the marks coincide in the (sound of the) letters ‘ALVE*O’. The marks differ in the (sound of the) fifth letter ‘C’ of the contested sign, which is not shared by the earlier mark. In addition, it also differs in the slightly fancy typeface of the contested sign. However, this typeface will not divert the consumer’s attention from the element it embellishes. Furthermore, from a phonetic point of view, both marks are pronounced in three syllables ‘Al-ve-o’ v ‘AL-VE-CO’.

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, which makes the part placed at the left (the initial part) the one that first catches the attention of the reader. The fact that the first four letters ‘ALVE’ coincide is relevant for the comparison, as the letter ‘C’ at the end of the contested sign can be easily overlooked or not heard.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for at least the vast majority 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.

The goods are partly identical, partly highly similar and partly dissimilar. They target both the public at large and a more professional public, whose level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness.

In addition, the marks are visually and aurally highly similar and their 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). Even consumers who pay a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Therefore, the differences between the signs are clearly not enough to counteract the similarities and to safely exclude a likelihood of confusion, as they differ only in one letter and in the slightly stylised typeface used in the contested sign. It can be reasonably concluded that consumers will not be able to distinguish between the marks in dispute for the goods that are identical or highly similar, and will perceive them as having the same origin - even though the level of attention is above average in relation to some of the goods in question and the professional public is concerned for some of the goods.

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 9 177 718 for the word mark ‘Alveo’.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or highly similar to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

The opponent has also based its opposition on:

• international trade mark registration No 380 471 for the word mark ‘ALVEO’ designating Italy, for articles made from the aforementioned products (see cl. 1.: foams and cellular bodies made of polyolefins, mainly polyethylene and polypropylene, and copolymers resulting therefrom); namely: blocks, panels, sheets, bars, profiles, pipes and nets (semi-finished products), sealing, insulating, packing, flotation and shock absorbing materials; self-adhesive tapes in Class 17.

Since this mark is identical to the one which has been compared and covers a narrower scope of goods, 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

Michal KRUK

Chantal VAN RIEL

Helen Louise MOSBACK

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.