OPPOSITION No B 2 969 460

Guardian Europe S.a.r.l., Zone Industrielle Wolser, 3452 Dudelange, Luxembourg (opponent), represented by Roeb y Cia, S.L., Plaza de Cataluña, 4 - 1º, 28002 Madrid, Spain (professional representative)

a g a i n s t

Union Vidriera Levante S.L., polígono industrial la mezquita,403, 12600 Vall D'uixo, Spain (applicant), represented by Vila & Rodriguez Abogados, Jativa 15, sexta, 11-A, 46002 Valencia, Spain (professional representative).

On 26/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 969 460 is upheld for all the contested goods.

2. European Union trade mark application No 16 929 812 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 929 812 for the figurative mark . The opposition is based on European Union trade mark registration No 6 756 589 for the word mark ‘AISLAGLAS’. 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 19: Glass for use in the architectural field; glass panels and sheets for use in buildings; unframed glass windows for use in buildings, namely, insulating glass units for mounting into window frames; windows; flat or contoured glass panels and sheets for use in windows, doors, shower enclosures and partition walls; glass for use in solar energy collection devices.

The contested goods are the following:

Class 19: Building glass; glass panels for doors; window glass; glass panels; glass doors; doors, not of metal; common sheet glass for building; fences made of laminated glass; modified sheet glass [for building]; insulating glass for building; safety glass; glass walls; structural elements of glass; building materials consisting of glass; glazing elements made from glass.

The contested building glass; glass panels for doors; window glass; glass panels; common sheet glass for building; modified sheet glass [for building]; insulating glass for building; safety glass; structural elements of glass; building materials consisting of glass; glazing elements made from glass are included in the broad category of, or overlap with, the opponent’s glass for use in the architectural field. Therefore, they are identical.

The contested glass doors; doors, not of metal; fences made of laminated glass; glass walls are similar to the opponent’s windows, as they have the same purpose and nature to the extent that all are construction element made principally of glass. They usually coincide in producer, relevant public, distribution channels and method of use.

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 similar are directed at the public at large, but also at business customers working in the construction sector, with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, field of application, sophistication, and the frequency of purchase of the goods.

3. The signs

AISLAGLAS
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.

The coinciding element ‘AISLA’ is not meaningful in certain territories, for example in those countries where English is spoken. Moreover, the differing elements, ‘GLAS’ and ‘PLUS’, will be understood and perceived as non-distinctive by this part of the public, as explained below. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark composed of one element, ‘AISLAGLAS’. As a word mark, it has no elements that could be considered more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark composed of the word ‘AISLAPLUS’ depicted in standard, grey, upper case characters. Furthermore, on the left, it contains a figurative element consisting of a blue cross with a white cross within.

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements. The figurative element is not related with the relevant goods and therefore it is distinctive to an average degree.

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).

Although both signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). Consequently, the earlier mark and the contested sign will be perceived as combinations of elements, ‘AISLA-GLAS’ and ‘AISLA-PLUS’, because these two final elements have specific meanings in the analysed territory:

The element ‘GLAS’ of the earlier sign will be understood by the analysed English-speaking public, since it is very close to the equivalent English word ‘glass’, meaning inter alia ‘a hard transparent substance that is used to make things such as windows’ (extracted from Collins English Dictionary on 18/07/2018 at https://www.collinsdictionary.com/dictionary/english/glass).

Since the goods found to be identical or similar are all related to glass in a broad sense, this element is descriptive and consequently non-distinctive for these goods.

As for the elements ‘PLUS’ of the contested sign, it will be perceived by the English-speaking public as being laudatory or argumentative in nature, to the extent that, it indicates something positive or something that provides an advantage or has an added value or quantity. Therefore, this word is non-distinctive for all of the relevant goods.

The coinciding word element ‘AISLA’ is meaningless and, as such, distinctive to an average degree.

Visually, the signs coincide in the in the letters ‘A-I-S-L-A’ placed in the same order at the beginning of the distinctive verbal components of both signs. They differ in the figurative element of the contested sign and in the non-distinctive parts of their verbal elements: ‘GLAS’ in the earlier mark and ‘PLUS’ in the contested sign. These elements have nevertheless limited impact on the perception of the signs, for the reasons explained above. Attention must be paid to the fact that the beginnings of signs are where consumers focus their attention, and in the present case the beginnings contain the same letters. This reinforces the impact of the coinciding parts of the marks, and somehow diminishes the impact of the differences, which are located at the end of the signs. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘AISLA’, present identically in both signs. The pronunciation differs in their non-distinctive endings, ‘GLAS’ in the earlier mark and ‘PLUS’ in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the English-speaking public, the elements ‘GLAS’ and ‘PLUS’, will be associated with the meaning explained above.

To that extent, the signs are conceptually dissimilar. However, because the meaningful elements are non-distinctive in connection with the goods at issue, their contribution to the semantic impact of the signs is limited.

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 analysed public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods have been found identical and similar. The level of attention of the relevant public may vary from average to high and the earlier mark has a normal degree of distinctiveness. The signs are visually similar to an average degree, aurally highly similar and conceptually dissimilar.

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).

Moreover, 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).

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 come from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

The similarities of the signs result from their identical, distinctive and initial verbal component, ‘AISLA’. The differences are mainly contained in secondary elements as concerns the perception of the sign by the relevant consumers. Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities, in particular taking into account the interdependence principle mentioned above.

Considering all the above, there is a likelihood of confusion, on the part of the English-speaking part of the 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 6 756 589. It follows that the contested trade mark must be rejected for all the contested 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.

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

Begoña URIARTE VALIENTE

Anna ZIÓŁKOWSKA

Anna BAKALARZ

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.