OPPOSITION No B 3 035 519

Roxtec AB, Rombvägen 2, 371 23, Karlskrona, Sweden (opponent), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20, Malmö, Sweden (professional representative)

a g a i n s t

Wallmax S.r.l., Corso di Porta Nuova n. 22, 20121, Milano, Italy (applicant), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo 10, 20121 Milano, Italy (professional representative).

On 22/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 035 519 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 of European Union trade mark application No 17 213 406 . The opposition is based on European Union trade mark registrations N° 14- 338 735, 14 784 409, 14 784 458 and 7 376 023. 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:

EUTM N° 7 376 023 (cancellation pending)

Class 6: Cable and pipe penetration seals, made from metal; sealing frames made from metal.

Class 17: Sealing frames, made from plastic or rubber.

Class 19: Non-metallic rigid pipes for building; non-metallic cable and pipe penetration seals; non-metallic sealing frames; cable and pipe penetration seals, made of plastic or rubber.

EUTM N° 14 338 735 (cancellation pending), N° 14 784 409 and N° 14 784 458

Class 17: Cable and pipe penetration seals, made from plastic or rubber.

The contested goods are the following:

Class 6: Cable and pipe glands, metallic.

Class 17: Cable and pipe glands of rubber or plastic.

Class 19: Non-metallic rigid pipes for building, namely cables and pipes.

Some of the earlier trade marks are under cancellation. Nevertheless, the decision will continue as it is the best case scenario for the opponent.

Some of the contested goods 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 listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 deemed identical are directed both at a general public and at a specialised public and business customers with specific professional knowledge or expertise.

The degree of attention varies from average to higher than average.

3. The signs

EUTM N° 14 784 409

EUTM N° 14 784 458 EUTM N° 14 338 735 EUTM N° 7 376 023
Earlier trade marks	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).

All trade marks are purely figurative.

Visually, the signs coincide in concentric circles of the same width with a black centre. Two of the earlier marks also have an horizontal line as in the contested one. The signs differ in their colours and in the size of their black middle circle. All earlier rights are composed of a single colour combined with black (or vice versa) while the contested sign has three different colours combined with black. Therefore, the signs are visually similar to a low degree.

Aurally, purely figurative signs are not subject to a phonetic assessment.

Conceptually, neither of the signs has a meaning. 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 marks

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, in its observations, mentioned that the opposing marks all allude to one of the opponent’s products which is very well known in the relevant field and has been the subject of extensive marketing efforts over the years by the opponent. Nevertheless, it filed no evidence of extensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. As previously mentioned, two of the earlier rights are under cancellation. Nevertheless, the examination of the opposition will proceed as if all the earlier marks had an average degree of distinctive character, which, for the opponent, is the best light in which the opposition can be examined in absence of reputation.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods have been deemed identical and the level of attention of the public varies from average to higher than average. The distinctiveness of the earlier trade marks is deemed average.

The similarities between the marks are lying in concentric circles of the same width with a black centre but the differences are more important. The different size of the black middle circle and the different colours of the concentric circles in the contested mark are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected. Consequently, it is unnecessary to wait for the outcome of the pending cancellation actions, as this would not change the outcome of the present decision.

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

Frédérique SULPLICE

Jessica Norma LEWIS

Janja FELC

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.