OPPOSITION No B 3 041 244

Holcim Technology Ltd, Zürcherstrasse 156, 8645 Jona, Switzerland (opponent), represented by Grunecker Patent- und Rechtsanwalte Partg Mbb, Leopoldstr. 4, 80802 München Germany (professional representative)

a g a i n s t

Ingroservice Italia S.r.l., Via Delle Fonti 8/1, 50018 Scandicci (FI), Italy (applicant), represented by Stefano Fanfani, Via Giovanni Bovio 19, 50136 Firenze, Italy (professional representative).

On 23/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 041 244 is upheld for all the contested goods.

2. European Union trade mark application No 17 449 422 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 17 449 422 for the figurative mark . The opposition is based on international trade mark registration No 978 111 designating Germany and Benelux for the word mark ‘ARTEVIA’. 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, following a partial cancellation of the international trade mark registration, are the following:

Class 19: Non-metallic building materials, mortars, cement, concrete, architectural concrete, ready-mixed concrete, special concrete, fibrous concrete.

The contested goods are the following:

Class 2: Resinous coatings; Synthetic resins for protection against corrosion; Epoxy resins for use in covering floors [coatings]; Epoxy resins for use in covering walls [coatings]; Epoxy resins for use in covering surfaces of buildings [coatings]; Epoxy coatings; Resins for coating purposes; Epoxy resin coatings; Epoxy coating for use on concrete industrial floors.

Class 19: Finish plasters made of coloured artificial resin; Screed coatings; Cladding materials (Non-metallic-); Synthetic flooring materials or wall-claddings; Cladding, not of metal, for building.

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 2

The contested resinous coatings; synthetic resins for protection against corrosion; epoxy resins for use in covering floors [coatings]; epoxy resins for use in covering walls [coatings]; epoxy resins for use in covering surfaces of buildings [coatings]; epoxy coatings; resins for coating purposes; epoxy resin coatings; epoxy coating for use on concrete industrial floors are goods used in the construction, repair and maintenance of buildings as a final step in a process in which the opponent’s non-metallic building materials are very likely to be used. They have the same purpose (namely covering the underlying layer to protect, insulate, and/or decorate it) and method of use. They can also be complementary. Moreover, they share the same distribution channels, are aimed at the same public and can be provided by the same undertaking. Therefore they are considered as highly similar.

Contested goods in Class 19

The contested finish plasters made of coloured artificial resin; screed coatings; cladding materials (non-metallic-); synthetic flooring materials or wall-claddings; cladding, not of metal, for building are included in the broad category of the opponent’s non-metallic building materials in Class 19. Therefore, they are identical.

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 or highly similar are directed both at professionals of the building industry, who are likely to pay greater attention than the average consumers, deemed to be reasonably well-informed and reasonably observant and circumspect (judgment of the Court of Justice of 22/06/1999, C-342/97, Lloyd Schuhfabrik Meyer, paragraph 26), and at normal purchasers who are “do-it yourself enthusiasts”, who are also deemed to display an increased level of attention when selecting and purchasing these products, or at least part of them (see, by analogy, judgment of 12/06/2007, T-339/05, LOKTHREAD, paragraph 33).

The degree of attention is high.

c) The signs

ARTEVIA
Earlier trade mark	Contested sign

The relevant territories are Germany and Benelux.

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 verbal element ‘ARTEVIA’ of the earlier mark has no meaning for relevant public, and is therefore normally distinctive.

The contested sign is composed of the verbal element ‘ARTEVIVA’, in slightly stylized letters. As a whole it has no meaning, however, it will be perceived as the separate words ‘Arte Viva’ due to the initial upper-case letters. The verbal element ‘VIVA’ will be understood as an exclamatory word meaning ‘long live!’ used for showing support or acclaim for a specified person or thing by the French-speaking part of the public. Additionally, the verbal element ‘ARTE’ will be understood as ‘art’ by the French-speaking part of the public, because it is very close to the equivalent word ‘art’ in French. These elements are not meaningful for the German- and Dutch-speaking part of the public. In any case, these elements are normally distinctive since they do not describe the goods or any of their characteristics.

The contested sign has no element that could be considered clearly more dominant than other elements.

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.

Visually, the signs are similar to the extent that they coincide in the letters ‘A-R-T-E-V-I-*-A’ although they differ in the additional letter ‘V’ (placed in the middle of the sign) and in the slightly stylized letters of the contested sign.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛A-R-T-E-V-I-*-A’, present identically in both signs. The pronunciation differs in the sound of the additional letter ‘V’ of the contested mark (placed in the middle of the sign), which has no counterpart in the earlier sign.

Therefore, the signs are highly similar.

Conceptually, although part of the public in the relevant territory will perceive the meanings of the contested sign as explained above, the earlier sign has no meaning. Therefore, since for this part of the public one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the remaining part of the public neither of the signs has a meaning, and a conceptual comparison is not possible. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

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.

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.

e) 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. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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).

In the present case, the goods are partially identical and partially similar to a high degree. The degree of attention is high. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to a high degree and conceptually either not similar or the conceptual aspect does not influence the assessment of the similarity of the signs. The minor differences created by the additional letter ‘V’ and the stylization of the letters in the contested sign are not sufficient to overcome the similarities between them, especially taking into account the identity or high similarity of the goods.

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 international trade mark registration No 978 111 designating Germany and Benelux. 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

Helen Louise MOSBACK

Ali KUÇUKŞAHİN

Sandra IBAÑEZ

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.