OPPOSITION No B 3 020 644

Industrial de Transformados Metálicos, S.A. (Intrame, S.A.), Carretera de Villabáñez, Km. 1, 47012 Valladolid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Vincent J.E.R. de Jong, Woolderbeekweg 4, 7553 BZ Hengelo, Netherlands (applicant).

On 19/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 020 644 is upheld for all the contested goods.

2. European Union trade mark application No 17 003 708 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 003 708 for the word mark ‘INTRAMAT’, namely against all the goods in Class 6. The opposition is based on Spanish trade mark registration No 2 816 788 for the figurative mark . 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 6: Common metal and their alloys, building materials of metal, buildings transportable of metals, railway material of metal, non-electric cables and wires of non metal, ironmongery of metal, metal hardware, tubes of metal, safes, other metal goods not included in other classes, metal ores.

The contested goods are the following:

Class 6: Structures and transportable buildings of metal; Unprocessed and semi-processed materials of metal, not specified for use; Metal hardware; Building and construction materials and elements of metal.

Transportable buildings of metal, metal hardware; building and construction materials of metal are identically contained in both lists of goods (including synonyms).

The contested building and construction elements of metal are included in the broad category of the opponent’s building materials of metal. Therefore, they are identical.

The contested structures of metal include, as a broader category, or overlap with the opponent’s buildings transportable of metals. 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 unprocessed and semi-processed materials of metal, not specified for use overlap with the broad category of the opponent’s common metals and their alloys. Therefore, they are identical.

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 target the public at large and business customers with specific professional knowledge or expertise in relation to metal materials, metal hardware and goods made of metal.

The degree of attention will vary from average to higher than average taking into account the more or less specialised nature of the goods or their price; it will be average in relation to plain and inexpensive goods such as small items of metal hardware, and higher in relation to expensive and rarely purchased goods such as transportable buildings of metal.

3. The signs

	INTRAMAT
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 elements ‘INTRAME’ and ‘INTRAMAT’ have no meaning as a whole for the relevant public. The prefix that the signs have in common, ‘INTRA-’, could be perceived by a part of the public as meaning ‘within; inside’. Nevertheless, the average consumer normally perceives a mark a whole and does not proceed to analyse its various details. As the signs at issue are not formed of two meaningful elements that could be immediately identified, the consumers will not split them into two parts. Although the relevant consumers might perceive the meaning of the prefix, the marks, taken as a whole, will be regarded as fanciful and distinctive.

The stylisation of the verbal element of the earlier sign is standard and essentially decorative, since it merely acts as a frame for the verbal element and embellishes it. Therefore, it is non-distinctive.

Visually, the signs coincide in the letters ‘INTRAM*’ at their beginnings. They differ in their endings, ‘E’ in the earlier sign and ‘AT’ in the contested mark. The signs also differ in the graphical stylisation of the earlier mark; however, the public will regard the badge of origin of the goods to be the verbal element of the sign, ‘INTRAME’, and not the non-distinctive depiction of the same. Moreover, when consumers encounter a trade mark containing a verbal element, they generally tend to focus on the beginning of that element. 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.

Therefore, the signs are visually similar to a higher than average degree.

Aurally, the signs coincide in the sequence of letters ‘INTRAM’. They differ in their last letters, ‘E’ and ‘AT’, in the earlier and contested mark, respectively. As mentioned above, consumers tend to focus more on the beginnings of the signs; therefore, the signs are considered aurally similar to a higher than average degree.

Conceptually, neither of the signs has a meaning as a whole 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. However, as already mentioned above, part of the public may associate the distinctive prefix ‘INTRA-’, included in both signs, with its meaning. For that part of the public, the signs are conceptually identical to that extent.

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

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, § 23).

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods in question are identical. The relevant public’s degree of attention is average to higher than average. The signs are visually and aurally similar to a higher than average degree. Depending on whether or not the public will associate the prefix ‘INTRA-’ with its meaning, either the signs will be conceptually identical to that extent or the conceptual comparison will not affect the comparison.

Six letters of the earlier mark are included in the same positions in the contested mark. The only differing letters are placed at the end of the signs, where the attention of the relevant public will not be focused. Even attentive consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of the signs (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Consequently, small differences between the signs can easily be overlooked, especially when they are placed at the end of the signs and the signs do not convey concepts that could help the public to distinguish between them or to memorise small spelling differences. Therefore, in the view of the Opposition Division, in the present case, the signs are similar enough to result in a likelihood of confusion even for the part of the public that pays a higher than average degree of attention.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 816 788. 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, he 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Renata COTTRELL

Marta Maria CHYLIŃSKA

Octavio MONGE GONZALVO

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.