OPPOSITION No B 2 975 525

Merlett Tecnoplastic SPA, Via 25 Aprile, 16, 21020 Daverio (VA), Italy (opponent), represented by Dott. Franco Cicogna & C.SRL, Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative)

a g a i n s t

Business Key, S.L., Pol. Ind. Sector Camps d’en Ricart, Calle Comerç Nº 10, Nave 4 a 9, 08780 Palleja (Barcelona), Spain (applicant), represented by Abaco Propiedad Industrial, Sant Bonaventura, 18 Bajos, 08172 Sant Cugat del Vallès, Spain (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 975 525 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 792 921 for the figurative trade mark , namely against all the goods and services in Classes 6 and 35. The opposition is based on European Union trade mark registration No 5 706 131 for the figurative trade mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

a) The goods and services

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

Class 6: Pipework of metal; pipe muffs (of metal); junctions of metal for pipes; common metals, unwrought, sheet metal; metal sheet, strip and coil; steel sheets; metals, semi-wrought, and their alloys; anchors; anvils; bells; laminated and cast building materials; rails and other materials of metal for railway tracks; chains not for vehicles; non-electric cables and wires of common metal; ironmongery; pipes and tubes of metal; safes and cash boxes; balls of steel; goods of common metal not included in other classes; ores.

After a limitation, the contested goods and services are the following:

Class 6: 5-Sides tees; 90º-Crosses; 90º-Tees; Arrester water hammers; Balls for valves; Bibcocks; Butterfly handles; Caps; Collars; Connections; Control rod sets for elastic joints; Couplings; Crossovers; Elbows; Extension fittings; Filters and backflow preventers; Flanges; Flexible hoses; Handle sleeves; Handles; Handwheels; Multilayer pipe rolls; Nipples; Nipples; Nuts; O’rings; Pressing tongs; Sealing clamps; Side-outlet elbows; Sieve’s filters; Spare part gaskets; Square handles; Strainer for valves; Stubs ends; U-Bolts; Unions; Valves; Water tightness o’ rings; Y connections; all of them related to water metal ducts.

Class 35: Retailing in shops of 5-Sides tees, 90º-Crosses; 90º-Tees, Arrester water hammers, Balls for valves, Bibcocks, Butterfly handles, Caps, Collars, Connections, Control rod sets for elastic joints, Couplings, Crossovers, Elbows, Extension fittings, Filters and backflow preventers, Flanges, Flexible hoses, Handle sleeves, Handles, Handwheels, Multilayer pipe rolls, Nipples, Nipples, Nuts, O’rings, Pressing tongs, Sealing clamps, Side-outlet elbows, Sieve’s filters, Spare part gaskets, Square handles, Strainer for valves, Stubs ends, U-Bolts, Unions, Valves, Water tightness o’rings, Y connections, all of them related to water metal ducts.

Some of the contested goods and services are identical or similar to goods on which the opposition is based. 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.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

c) The signs

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 sign is a figurative mark consisting of the letters ‘M’ and ‘T’ in a pale-grey square. The letter ‘M’, slightly bigger, is placed over the letter ‘T’, which is set inside a dark grey inverted triangle. These figurative elements, the square background and the inverted triangle, are basic geometric shapes and are therefore non-distinctive. The verbal element ‘MT’ will be seen as meaningless and is, therefore, distinctive to an average degree in respect of the goods for which the trade mark is registered.

The contested mark is also a figurative trade mark consisting of the same letters: ‘M’, in a standard bold upper case font in dark-blue, followed by ‘T’, in a bold upper case italic font in light-blue. The verbal element ‘MT’ is meaningless and therefore distinctive in respect of the goods and services for which registration is sought.

The signs have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘MT’ and differ in the overall stylisation, structure and colour combination of the figurative elements.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression.

Both marks are very short signs and the public will be able to perceive all of their individual elements.

Therefore, the fact that the signs comprise the same two letters, ‘MT’, is not sufficient for a finding of similarity, as they have no other similarities. As described in detail above, the combination of the figurative elements in the signs means that they convey very different overall impressions.

Therefore, the signs are visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the distinctive letters ‘MT’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for 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.

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.

In this regard, the opponent claims that ‘the earlier mark has no link with the covered goods in Class 6. Therefore, the earlier mark has a high level of inherent distinctiveness.’

It is the Office’s practice, when an earlier mark is not descriptive (or otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71).

The opponent also argues that it is ‘the leading manufacturer of flexible hoses in plastic materials and it has been on the market since 1952’. However, it did not file any evidence to prove the enhanced distinctiveness of the earlier mark. 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.

e) Global assessment, other arguments and conclusion

The goods and services were assumed to be identical, and they target the professional public and the public at large with a degree of attention varying from average to high. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar only to a low degree and are aurally identical, and they have no concept in common that would lead the public to think that the goods and services come from the same undertaking or from linked undertakings. However, the differences between the marks are likely to have a significant impact considering the short length of the signs, which allows the relevant public to easily perceive the differences between them.

The signs in dispute have only two letters; therefore, both are short marks.

In the assessment of likelihood of confusion between signs comprising the same two letters, the visual comparison is, in principle, decisive, because the aural identity may be overridden by sufficient visual differences between them. A likelihood of confusion can be safely excluded when two conflicting signs, albeit containing or consisting of the same combination of letters, are stylised sufficiently differently that their different overall graphical depictions eclipse the coinciding verbal element.

In the present case, the signs consist of the same letters stylised in different manners: the positioning of the letters in each sign is different, as are the colours and overall stylisation.

Consequently, the similarities between the signs are limited to the letters ‘MT’, and therefore, despite the opponent’s opinion, the signs clearly cannot be considered ‘completely identical’, but only visually similar to a low degree.

The public, even that with an average degree of attentiveness, will notice those differences and keep them in mind, especially considering that the signs are short.

In its observations, the opponent also argues that it is the owner of several earlier trade mark registrations, two in the EU (No 5 706 197 ‘MERLETT TECHNOPLASTIC’ and No 10 135 441 ‘MERLETT’) and one in the Italian registry (No 1 647 031 ‘MERLETT’), and claims that said ‘trademarks, in addition to the trademark MT, have a similar structure centred on the name of the Company’ and consequently claims the protection given to a family of marks.

It remains necessary to consider the opponent’s argument that the above mentioned earlier trade marks, all characterised by the presence of the same initial letters, ‘MT’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65).

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, by filing only the trade mark registration numbers, the opponent failed to prove that it actually uses a family of marks in the same field as those covered by the contested trade mark and, therefore, the opponent’s argument has to be set aside.

The opponent also refers to previous decisions of the Office to support its arguments (i.e. 08/06/2009, B 1 125 873, / ). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

As far as another decision of the General Court (i.e. 28/02/2014, T‑520/11, GE, EU:T:2014:100) is concerned, the trade marks at issue and circumstances are not comparable to those in the present case.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Even though, as correctly pointed out by the opponent, the signs are aurally identical and conceptually no comparison can be made, the fact remains that, in short signs, as in the present case, the visual aspect is particularly relevant in the assessment of the likelihood of confusion.

Considering the above, and even assuming that the goods and services are identical, the Opposition Division considers that there is no likelihood of confusion or association, since the low degree of visual similarity between the signs largely counteracts their aural identity and will enable the relevant public to safely distinguish between the marks.

Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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

Denitza STOYANOVA-VALCHANOVA

Sofia SACRISTAN MARTINEZ

Martin EBERL

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.