OPPOSITION No B 2 931 569

Etex Building Performance GmbH, Scheifenkamp 16, Ratingen, Germany (opponent), represented by Von Boetticher Rechtsanwälte Partnerschaftsgesellschaft mbB, Oranienstr. 164, 10969, Berlin, Germany (professional representative)

a g a i n s t

Krimelte Oü, Suur-Paala 10, 13619 Tallinn, Estonia (applicant), represented by Patendibüroo Turvaja Oü, Liivalaia 22, 10118 Tallinn, Estonia (professional representative).

On 30/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 931 569 is partially upheld, namely for the following contested goods:

Class 1: Glaziers' putty.

Class 17: Stopping materials; gasket material; sealants for buildings; caulking compounds for sealing cracks; sealing agents for use in the construction industry; dielectrics [insulators]; insulators; caulking compounds; insulating materials; insulating refractory materials; non-conducting materials for retaining heat; sealant compounds for joints; substances for insulating buildings against moisture; waterproof packings; compositions to prevent the radiation of heat; foam insulation materials for use in building and construction.

2. European Union trade mark application No 16 812 621 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 16 812 621 for the word mark ‘PREFASEAL’, namely against all the goods in Classes 1, 2 and 17. The opposition is based on international trade mark registration No 568 211 for the word mark ‘PROMASEAL’. The opponent invoked Article 8(1)(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.

1. The goods

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

Class 17: Organic insulating and sealing materials used for fireproofing, in the form of panels, profiles, sheets, molded parts and powders which, by way of a physico-chemical reaction, turn into foam when coming into contact with fire, used for sealing joints and perforations in fire-resistant building elements.

The contested goods are the following:

Class 1: Industrial chemicals; chemical preparations for scientific purposes, other than for medical or veterinary use; synthetic resins, unprocessed; unprocessed plastics; fertilizers; fire extinguishing compositions; tempering preparations; soldering chemicals; chemical substances for preserving foodstuffs; tanning substances; adhesives, other than for stationery or household purposes; adhesives for use in industry; dispersions of plastics; glaziers' putty; glue for industrial purposes; cement for mending broken articles; plasticizers; vulcanising preparations; silicon; polymer resins, unprocessed; epoxy resins, unprocessed.

Class 2: Wood preservatives; coatings for use as primers; epoxy primers; sealant primers; oils for the preservation of wood; anti-rust oils.

Class 17: Rubber, raw or semi-worked; gutta-percha; rubber for use in manufacture; asbestos; mica; plastics in extruded form for use in manufacture; resins in extruded form; stopping materials; gasket material; flexible hoses, not of metal; sealants for buildings; caulking compounds for sealing cracks; sealing agents for use in the construction industry; vulcanized fiber [fibre]; dielectrics [insulators]; insulators; adhesive bands, other than stationery and not for medical or household purposes; caulking compounds; insulating materials; insulating refractory materials; non-conducting materials for retaining heat; sealant compounds for joints; filteringmaterials [semi-processed foams or films of plastic]; synthetic resins [semi-finished products]; substances for insulating buildings against moisture; waterproof packings; ebonite [vulcanite]; compositions to prevent the radiation of heat; foam insulation materials for use in building and construction; semi-worked plastic substances.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 1

The contested industrial chemicals; chemical preparations for scientific purposes, other than for medical or veterinary use; synthetic resins, unprocessed; unprocessed plastics; fertilizers; fire extinguishing compositions; tempering preparations; soldering chemicals; chemical substances for preserving foodstuffs; tanning substances; dispersions of plastics; plasticizers; vulcanising preparations; silicon; polymer resins, unprocessed; epoxy resins, unprocessed are all chemicals in a raw, unfinished state and not yet mixed with other chemicals and inert carriers into a final product (International Trademark Classification: A Guide to the Nice Agreement, Oxford University Press). The opponent´s goods, organic insulating and sealing materials used for fireproofing, in the form of panels, profiles, sheets, molded parts and powders which, by way of a physico-chemical reaction, turn into foam when coming into contact with fire, used for sealing joints and perforations in fire-resistant building elements, are finished products that are ready to use. These products may be made of chemicals that are the contested goods in Class 1, as argued by the opponent. However, this mere fact is not sufficient to find them similar. Special attention must be given to their specific purpose as well as to their relevant public and distribution channels.

In the present case, the goods have different relevant publics. Without evidence showing the contrary, the Opposition Division considers that the contested goods could be purchased and used by an undertaking that produces, inter alia, some of the opponent´s goods using these chemicals, and sells the finished products to its customers. Therefore, the relevant public for these goods is different. Even if the relevant public were the same, the relevant public must consider it usual that the goods are sold under the same trade mark, which normally implies that a large number of the producers or distributors of the goods are the same (01/03/2005, T-169/03, Sissi Rossi, EU:T:2005:72, § 63). Moreover, they cannot be considered to be complementary in the sense that the use of the contested goods would be indispensable or important for the use of the opponent’s goods or vice versa, nor are they in competition as they do not serve the same or similar purposes. Furthermore, their distribution channels are not the same. Given the different manufacturing processes and technical know-how involved in the production of the goods in question, the Opposition Division finds it unlikely that they could come from the same undertakings. Moreover, the opponent did not submit any evidence to demonstrate the contrary. For example, there is no evidence on file that there is even a single undertaking that manufactures both the contested goods in Class 1 and the opponent’s goods in Class 17 or that the goods are sold through the same distribution channels. The goods are therefore dissimilar (24/10/2017, R 352/2017-2, LIGOCEL / LIGNOCEL § 23-24).

The contested adhesives, other than for stationery or household purposes; adhesives for use in industry; glue for industrial purposes; cement for mending broken articles are products used in industry for joining or sticking items together. They have a different purpose to the opponent´s goods, whose purpose is fireproof insulation and sealants. They have different distribution channels, sales outlets, and methods of use. They are neither in competition nor complementary to each other. Therefore, they are dissimilar.

The contested glaziers' putty is ‘a soft, malleable greyish-yellow paste, made from ground chalk and raw linseed oil, that hardens after a few hours and is used for sealing glass in window frames’ (information extracted from https://en.oxforddictionaries.com on 26/10/2018). Its purpose (to seal) is also present in the opponent´s organic insulating and sealing materials used for fireproofing, in the form of panels, profiles, sheets, molded parts and powders which, by way of a physico-chemical reaction, turn into foam when coming into contact with fire, used for sealing joints and perforations in fire-resistant building elements, although these goods also have an additional purpose, namely to fireproof building elements. They can share distribution channels and methods of use, and it is possible that the same undertaking could manufacture sealants that are both fireproof and non-fireproof. Therefore, these goods are similar.

Contested goods in Class 2

The contested wood preservatives; coatings for use as primers; epoxy primers; sealant primers; oils for the preservation of wood; anti-rust oils are all preservative or preparatory coatings, whose purpose is to prevent deterioration due to external elements, the absorption of subsequent layers of paint or the development of rust. These goods have a different purpose to the opponent´s goods, which are fireproof insulation and sealants. They have different distribution channels, sales outlets, and methods of use. They are neither in competition nor complementary to each other. Therefore, they are dissimilar.

Contested goods in Class 17

The contested stopping materials; gasket material; sealants for buildings; caulking compounds for sealing cracks; sealing agents for use in the construction industry; dielectrics [insulators]; insulators; caulking compounds; insulating materials; insulating refractory materials; non-conducting materials for retaining heat; sealant compounds for joints; substances for insulating buildings against moisture; waterproof packings; compositions to prevent the radiation of heat; foam insulation materials for use in building and construction are all either materials or finished products used in construction and repair that have in common the purpose of insulation and/or sealing. These goods therefore have the same purpose and nature as the opponent´s goods, with the sole proviso that the opponent´s goods are always fireproof while these contested goods are not necessarily so. They can have the same commercial origin. Moreover, they are distributed through the same channels and target the same relevant public. Therefore, and taking into account that some of the contested goods may actually be identical to the opponent´s goods, it can be concluded that all these goods are at least similar.

As mentioned above, the opponent´s goods in Class 17 are all fireproof insulation and sealants that are finished products. The contested rubber, raw or semi-worked; gutta-percha; rubber for use in manufacture; asbestos; mica; plastics in extruded form for use in manufacture; resins in extruded form; vulcanized fiber [fibre]; filtering materials [semi-processed foams or films of plastic]; synthetic resins [semi-finished products]; ebonite [vulcanite]; semi-worked plastic substances are all raw or semi-worked materials used in the manufacture of finished products. Although it is possible that some of these materials may be used in the manufacture of the opponent´s products, this is not sufficient for a finding of similarity between them. They have different purposes, distribution channels, sales outlets, and methods of use. They are neither in competition nor complementary to each other. Therefore, they are dissimilar.

The contested flexible hoses, not of metal; adhesive bands, other than stationery and not for medical or household purposes are finished products that, while they can be used, inter alia, in buildings, have no other point in common with the opponent´s goods. These goods have a different purpose to the opponent´s goods, which are fireproof insulation and sealants. They have different distribution channels, sales outlets, and methods of use. They are neither in competition nor complementary to each other. Therefore, they are dissimilar.

The opponent refers to previous decisions of the Office to support its arguments of similarity between the goods. 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.

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.

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 at least similar are directed at the public at large, i.e. DIY enthusiasts, and at business customers with specific professional knowledge or expertise. Their level of attention will be above average considering the technical nature of the goods at issue.

3. The signs

PROMASEAL	PREFASEAL
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘SEAL’ is meaningful in certain territories, for example in those countries where English is understood. As correctly stated by the applicant, ‘SEAL’ is an English word meaning, inter alia, ‘a device or substance that is used to join two things together so as to prevent them from coming apart or to prevent anything from passing between them’ (information extracted from https://en.oxforddictionaries.com on 26/10/2018). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the Spanish- and Italian-speaking public.

Both signs are word marks composed of one verbal element. Neither the element ‘PROMASEAL’ of the earlier right nor the element ‘PREFASEAL’ of the contested sign have any meaning for the relevant public and are both, therefore, distinctive.

Visually and aurally, the signs coincide in the letters (or sound of the letters) ‘P-R-*-*-A-S-E-A-L’, which make up 7 of the 9 letters of both of the signs. These coinciding letters are placed at the beginning and the end of the signs and coincide in their order. Moreover, the signs have the same number of syllables, same rhythm and intonation. However, they differ in the middle letters ‘-O-M-’ of the earlier right, which are ‘-E-F-’ in the contested sign.

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

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.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the signs have been found visually and aurally similar to an average degree, while the conceptual aspect does not influence the assessment of the similarity of the signs. The goods are partly at least similar and partly dissimilar. The degree of attention of the relevant public, made up of both the general public and business customers, is said to be above average.

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 their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish- and Italian-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be at least 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.

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

Begoña URIARTE VALIENTE

Helen Louise MOSBACK

Maria del Carmen COBOS PALOMO

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.