OPPOSITION No B 2 916 628

Poitou Menuiseries SAS, La Folie, RN 10 Nord, 86440, Migne-Auxances, France (opponent), represented by IPSIDE, 7-9, Allées Haussmann, 33300, Bordeaux, France (professional representative)

a g a i n s t

Weru GmbH, Zumhofer Strasse 2, 73635, Rudersberg, Germany (applicant), represented by Becker Bohn Rechtsanwälte, Breitscheidstr. 10 (Bosch-Areal), 70174, Stuttgart, Germany (professional representative).

On 27/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 916 628 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods of European Union trade mark application No 16 482 713 ‘CEANO’. The opposition is based on French trade mark registration No 3 452 996 . The opponent invoked Article 8(1)(b) EUTMR.

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 applicant has not submitted the request for proof of use of the earlier mark by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 are the following:

Class 6: Building materials of metal, locks and hardware of metal, metallic reinforcing materials doors of metal, door stops of metal and windows, bars for metal railings, armour plating, handles and knobs of metal, metal window frames and doors, partitions of metal, frames of metal for building doors and windows, window fasteners of metal, metal rollers windows, fittings of metal for windows, ironwork for windows and doors, jalousies of metal, door cases of metal, door panels of metal, doors of metal, shutters of metal, windows metal.

Building materials of metal, locks and hardware of metal, metallic reinforcing materials doors of metal, door stops of metal and windows, bars for metal railings, armour plating, handles and knobs of metal, metal window frames and doors, partitions of metal, frames of metal for buliding doors and windows, window fasteners of metal, metal rollers windows, fittings of metal for windows, ironwork for windows and doors, jalousies of metal, door cases of metal, door panels of metal, doors of metal, shutters of metal, windows metal.

Class 19: Doors of polychloride vynil, building materials not of metal of polychloride vynil, namely: doors and windows, door cases, door stops and windows, frames, partitions, slide frames, rollers and fittings for windows and doors, door casing not of metal of polychloride vynil, door panels, shutters of polychloride vynil, windows of polychloride vynil, building materials not of metal, namely: doors and windows not of metal, door cases not of metal, folding doors, wood panelling, door cases and windows, door cases and windows, door frames, shutters.

Doors of polychloride vynil, building materials not of metal of polychloride vynil, namely: doors and windows, door cases, door stops and windows, frames, partitions, slide frames, rollers and fittings for windows and doors, door casing not of metal of polychloride vynil, door panels, shutters of polychloride vynil, windows of polychloride vynil, building materials not of metal, namely: doors and windows not of metal, door cases not of metal, folding doors, wood panelling, door cases and windows, door cases and windows, door frames, shutters.

Class 37: Services of construction, repair, installations, joinery work, placing of element joinery, information in subject of repair and building. Services of construction, repair, installations, joinery work, placing of element joinery, information in subject of repair and building

The contested goods are the following:

Class 6: Windows of metal, aluminium windows, ironwork for windows, fittings of metal for windows, window fasteners of metal, window stops of metal, window frames of metal, aluminium doors, doors of metal, door panels of metal, door fasteners of metal, building materials of metal, window casement bolts of metal, casements of metal, doors, gates, windows and window coverings of metal.

[Windows of metal, Aluminium windows, Ironwork for windows, Fittings of metal for windows, Window fasteners of metal, Window stops of metal, Window frames of metal, Aluminium doors, Doors of metal, Door panels of metal, Door fasteners of metal, Building materials of metal, Window casement bolts of metal, Casements of metal, Doors, gates, windows and window coverings of metal]

Class 19: Building materials of plastics material, window frames, not of metal, windows, not of metal, plastic window frames, doors, gates, windows and window coverings, not of metal, folding doors, not of metal, doors, not of metal [Building materials of plastics material, Window frames, not of metal, Windows, not of metal, Plastic window frames, Doors, gates, windows and window coverings, not of metal, Folding doors, not of metal, Doors, not of metal]

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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

Windows of metal; ironwork for windows; fittings of metal for windows; window fasteners of metal; building materials of metal; window frames of metal; doors of metal; door panels of metal; window stops of metal are identically contained in both lists of goods (including synonyms). Therefore, they are identical.

The contested aluminium windows; casements of metal are included in the broad category of the opponent’s windows metal. Therefore, they are identical.

The contested aluminium doors are included in the broad category of the opponent’s doors of metal. Therefore, they are identical.

The contested door fasteners of metal; window casement bolts of metal overlap with the opponent’s locks of metal. Therefore, they are identical.

The contested window coverings of metal include, as a broader category, the opponent’s jalousies of metal. 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 gates of metal are structures used at the entrance to a field, a garden or the grounds of a building. These goods are at least similar to the opponent’s doors of metal as they have the same nature and purpose. They usually also coincide in producer, relevant public and distribution channels.

Contested goods in Class 19

Windows, not of metal; doors not of metal; folding doors, not of metal are identically contained in both lists of goods (including synonyms). Therefore, they are identical.

The contested building materials of plastics material overlap with the opponent’s building materials not of metal, namely: doors and windows not of metal, door cases not of metal, folding doors, wood panelling, door cases and windows, door cases and windows, door frames, shutters. 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 window frames, not of metal; plastic window frames are included in the broad category of the opponent’s frames (not of metal of polychloride vynil). Therefore, they are identical.

The contested window coverings, not of metal overlap with the opponent’s shutters (not of metal). Therefore, they are identical.

The contested gates, not of metal are structures not of metal used at the entrance to a field, a garden or the grounds of a building. These goods are at least similar to the opponent’s doors not of metal, as they have the same nature and purpose. They usually also have the same producer, relevant public and distribution channels.

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 and at least similar are directed at the public at large as well as business customers with specific professional knowledge or expertise in the construction field. The degree of attention may vary from average to higher than average considering the nature of some of the goods (e.g. windows and doors not of metal; windows and doors of metal), which may be purchased either in compliance with safety specifications or for fitting with standard or customised measures.

3. The signs

	CEANO
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 trade mark is a figurative sign containing the word ‘Océane’ depicted in a standard black bold typeface; the letters ‘cé’ are placed in a red square while the letters ‘an’ are within a dark grey square. Below the component ‘Océane’ are the words ‘LE RÉSEAU DES MENUISIERS’, depicted in a significantly smaller font. All those elements are against a light grey rectangular background.

The word ‘Océane’ will be perceived by the relevant public as a French female given name, which means ‘ocean’. This concept is considered distinctive, since it has no relation to the goods at issue. Conversely, the element ‘LE RÉSEAU DES MENUISIERS’ will be associated with the meaning of ‘the network of carpenters’ (i.e. persons whose job is, inter alia, to construct, erect, install, and repair structures and fixtures made from wood and other materials). Bearing in mind that the relevant goods are building materials, this element has to be considered weak for all the relevant goods, as it may refer to the professional public that these products target.

The element ‘Océane’ is the dominant element of the earlier mark, as it is the most eye-catching.

The contested word trade mark, ‘CEANO’, has no meaning for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in the sequence of the letters ‘CEAN’. However, they differ in the last letter, ‘O’, of the contested sign, in the initial and final letters, ‘O’ and ‘E’, of the earlier mark, in the accent on the third letter, ‘E’, of the earlier mark, in the element ‘LE RÉSEAU DES MENUISIERS’ and in the overall graphical depiction of the earlier trade mark.

Therefore, also considering the previous assertions concerning the distinctive and dominant elements of the trade marks, the marks are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CE(É)AN’. However, they differ in the sound of the last letter ‘O’ of the contested sign, in the sound of the initial letter ‘O’ and in the element ‘LE RÉSEAU DES MENUISIERS’ of the earlier mark.

Therefore, and also considering the previous assertions concerning the distinctive and dominant elements of the trade marks, these are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning 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 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, despite the presence of a weak element in the mark, as stated above in section c) of this 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.).

In the present case, the goods are identical or at least similar and they target the public at large and professionals, whose degree of attention may vary from average to higher than average. The distinctiveness of the earlier trade mark must be seen as normal.

The trade marks in conflict are visually similar to a low degree, aurally similar to an average degree and not conceptually similar.

In particular, the signs in conflict differ in their first letters, ‘O’ in the earlier mark and ‘C’ in the contested sign. In principle, commonalities at the beginning of signs increase their similarity more than commonalities in the middle or at the end of signs. In accordance with common experience and case-law (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79), consumers are likely to pay more attention visually to the part of the mark at the beginning because it is the element they read first. Consequently, the different first letters of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

In addition, the Court has held that average consumers normally perceive a mark as a whole and will not proceed with an artificial dissection of the sign except when word elements suggest a specific meaning or resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). In the current case, the similarities between the signs are limited to the meaningless sequence of letters ‘CEAN’, which are integrated in the words ‘O-CÉAN-E’ of the earlier mark and ‘CEAN-O’ of the contested trade mark. However, the fact that the signs have some letters in common does not necessarily lead to a finding of likelihood of confusion. Confusion is particularly unlikely when the overlapping part is not perceived independently within the overall impression of the marks, as in the present case, where the coinciding part, ‘CEAN’, (i) does not suggest a specific meaning and (ii) is not isolated by the use of a special character, hyphen or any other punctuation mark. Therefore, it is unlikely that the coinciding part of the signs will be perceived separately from the differing elements; rather, it will be absorbed within the different overall impressions given by the marks under comparison.

In addition, the signs at issue do not have any conceptual similarity that could lead to a risk of likelihood of confusion or association between the marks, since only the earlier mark will be associated with a meaning by the relevant public. As the General Court stated, it can happen that conceptual differences may be such as to counteract to a large extent the visual and aural similarities between marks. For this to happen, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately, and the other trade mark must not have such a meaning or mean something completely different (22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 56). In the present case, the consumers will easily grasp the conceptual differences between the marks, since the earlier mark will be perceived as a French female given name that means ‘ocean’. The meaning conveyed by the earlier mark will, therefore, help consumers to clearly distinguish the signs on a conceptual level and, consequently, will prevent them from mistakenly believing that the goods have the same origin.

Therefore, the Opposition Division considers that, taking into account, in particular, the visual and conceptual differences existing between the marks, the signs are sufficiently different to exclude any likelihood of confusion between the marks even for identical goods.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Paloma PERTUSA MARTÍNEZ

Aldo BLASI

Alexandra APOSTOLAKIS

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.