OPPOSITION No B 2 974 643

Ardex GmbH, Friedrich-Ebert-Str. 45, 58453 Witten-Annen, Germany (opponent), represented by Andrejewski Honke, An der Reichsbank 8, 45127 Essen, Germany (professional representative)

a g a i n s t

Lian Chen, C/ Cobre, 1-4, Seseña Nuevo, Spain (applicant), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative).

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

DECISION:

1. Opposition No B 2 974 643 is upheld for all the contested goods, namely

Class 2:Distempers, Acrylic paints; Watercolor paints; Paints and washes; Distempers; Spray coatings [paints]; Decorating materials in the nature of paints; Lacquers and varnishes; Varnish paints; Enamels [varnishes]; Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants; Mordants; Raw natural resins.

2. European Union trade mark application No 16 825 614 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 825 614 for the figurative mark , namely against some of the goods in Class 2. The opposition is based on European Union trade mark registration No 3 516 143 for the word mark ‘ARDEX’. 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.

a) The goods

The goods on which the opposition is based are, among others, the following:

Class 2: Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood; primers; adhesive and priming dispersions for mineral bases; preservatives against rust; dyestuffs; stains; raw natural resins; colour concentrates for colouring fillers and levelling compounds; corrosive liquids for the coloured shaping of filled surfaces.

The contested goods are the following:

Class 2: Distempers, Acrylic paints; Watercolor paints; Paints and washes; Distempers; Spray coatings [paints]; Decorating materials in the nature of paints; Lacquers and varnishes; Varnish paints; Enamels [varnishes]; Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants; Mordants; Raw natural resins.

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.

The applicant argues that all the contested goods are aimed at ‘artists’ and that the opponent omitted in its comparison of the goods this restriction. The Opposition Division notes that the goods in Class 2 at which this opposition is directed and, according to the specification of the goods as applied for, are not limited to ‘artists’.

Paints; Lacquers and varnishes; Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Raw natural resins are identically contained in both lists of goods (including synonyms).

The contested Distempers (listed twice in the specification of the goods; being a decorative paint), Acrylic paints; Watercolor paints; washes; Spray coatings [paints] (being a covering that is applied to the surface of an object); Decorating materials in the nature of paints; Varnish paints; are included in the broad category of, or overlap with, the opponent’s Paints. Therefore, they are identical.

The contested Enamels [varnishes] overlap with the opponent’s varnishes. Therefore, they are identical.

The contested Colorants are included in the broad category of, or overlap with, the opponent’s dyestuffs. Therefore, they are identical.

The contested mordants are substances used before the application of a dye, possessing the ability to fix colours in textiles, leather, etc. They are, thus, complementary to the opponent’s dyestuffs. Although their natures may not be same, they have the same distribution channels and end users. Therefore, they are considered similar.

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 found to be identical and similar 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 specialised nature of the goods, the frequency of purchase and their price.

c) The signs

ARDEX
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division will focus on the Polish-speaking part of the public because the signs are meaningless in Polish and the Opposition Division considers that this increases the likelihood of confusion between the signs.

The earlier trade mark is a word mark consisting of ‘ARDEX’. In case of word marks, the typeface actually used is immaterial. Differences in the use of lower or upper case letters are irrelevant since it is the word as such which is protected. The contested sign is a figurative mark consisting of two verbal elements, ‘ARTIX’ and ‘PAINTS’ written in rather standard and smaller in size upper case letters. The first word is depicted in bold black stylised capitalised characters. This word is underlined.

The words ‘ARDEX’ of the earlier mark and ‘ARTIX PAINTS’ of the contested sign do not have any meanings for the relevant public, and, therefore, their distinctiveness is average.

The applicant argues that the contested sign has a clear root ‘ART’ that will be understood by consumers. It argues that this is particularly clear from the fact that the applicant has designated Classes 2 and 16 goods specifying that the products are aimed at ‘artists’. The Opposition Division notes that consumers will not artificially dissect the letters ‘A-R-T’ in the contested sign in particular as ‘art’ is a meaningless term for the relevant part of the public and, in addition, it does not constitute an independent component in the contested sign. Furthermore, the goods in Class 2 at which the opposition is directed and as already noted above are not specifically limited to ‘artists’. In consequence, the applicant’s allegations in this regard have to be rejected.

The applicant also argues that the conflicting parties operate in different sectors, namely that the opponent is active in the building sector, while the applicant focuses on the filed of fine arts, crafts, stationery and scrapbooking. In this regards the Operation Division notes that the marks must be compared in as they are registered and applied for, and no account can be taken of how they are used or intended to be used on the market. Therefore, this applicant’s argument has to be considered as unfounded.

As regards the stylisation of the contested sign, it is considered that, although the last letter ‘X’ displays some level of fancifulness, it will be perceived by the consumers as having a purely decorative nature. Therefore, it will have a limited impact on the public as an indicator of a commercial origin.

Account must be taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

In the contested sign the word ‘ARTIX’ is more dominant (visually eye-catching) given that it is bigger in size and it occupies the central position within the sign.

Visually, the signs coincide in three out of five letters of ‘ARDEX’ and ‘ARTIX’ respectively, namely two letters in their beginnings, ‘AR*’, and the last letter, ‘*X’. The signs differ in their middle letters, ‘DE’ and ‘TI’ of the above indicated words. The signs differ also in the further word element of the contested sign, namely ‘PAINTS’. The Opposition Division disagrees with the applicant who, in its observations, argues that this additional word is of utmost importance. The Opposition Division points out that this word is placed in a secondary position within the sign and as such it is not visually eye-catching.

It must be pointed out that 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 of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical beginning of the signs is of particular importance. Also, the identical length of the earlier mark and of the word ‘ARTIX’ in the contested sign and the fact that their different letters are positioned in the middle parts means that these will not be clearly identified. As such this difference loses weight.

The sigs differ also in the structure and in the stylisation of the contested sign. Contrary to the applicant’s allegations, consumers will afford more trade mark significance to the word elements of the contested sign, as they are normally distinctive in relation to the relevant goods, than to the stylisation of the contested sign. In the present case, the stylisation is not sufficiently eye-catching in order to help consumers to differentiate clearly between the signs. In any event, it will not be perceived as an indication of commercial origin.

It is concluded that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘A-R*X’, present identically in both signs. The pronunciation differs in the sound of two middle letters, ‘D-E’ in the earlier mark and ‘T-I’ of ‘ARTIX’ in the contested sign. However, it must be noted that the letters ‘D’ and ‘T’ are aurally fairly close. The coinciding components constitute the dominant element in the contested sign. The pronunciation differs in the sound of the letters ‛P-A-I-N-T-S’ of the contested mark, which have no counterparts in the earlier mark.

Therefore, the signs are 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 are partially identical and partially similar.

The marks are visually and aurally similar to an average degree, while a conceptual comparison is not possible, thus, it does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is deemed to be normal. The public’s degree of attentiveness is considered to vary from average to high.

The signs at issue have in common the letter sequence ‘AR*X’. The differences between the signs are confined to two central letters of the earlier mark and the dominant word of the contested sign. Having said that it must be noted that the letters ‘D’ and ‘T’ are aurally similar. Contrary to the applicant’s allegations, the differing word ‘PAINTS’ of the contested sign, due to its subordinate position, it is not sufficient to prevent likelihood of confusion between the signs.

In consequence, in the present case, the word elements ‘ARDEX’/’ARTIX’ will be the parts of the signs by which the consumer will primarily identify the goods covered by the marks, respectively. Contrary to the applicant’s view, the dominant word element of the contested sign will have stronger impact on the consumer than its figurative components. This is because the consumer will most readily refer to a sign by its verbal components rather than the figurative elements.

Since the relevant public does not have the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind, the fact that the contested sign includes further elements is not sufficient to prevent the relevant public (including professionals with a higher level of attention) from confusing the two marks at issue, which are visually and aurally similar to an average degree, and relate to identical and similar goods.

As regards the argument of the applicant that the signs are short marks and therefore the consumer is more likely to distinguish between the marks, it should be stated that the earlier mark consists of five letters and the contested one of eleven letters and, as such, they do not constitute short signs.

Therefore, the differences between the signs are considered insufficient to safely distinguish between the marks as to their trade origin. It must be recalled that, according to well-established case-law of the Courts, a trade mark must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking, which is responsible for their quality. Accordingly, the risk that the public might believe that the goods in question come from the same undertaking, or from economically-linked undertakings, constitutes a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the Polish-speaking public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 516 143. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ewelina SLIWINSKA

Marzena MACIAK

Gueorgui IVANOV

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.