OPPOSITION No B 3 048 633

Max Wild GmbH, Leutkircher Str. 22, 88450 Berkheim, Germany (opponent), represented by Patentanwälte Olbricht Buchhold Keulertz Partnerschaft mbB, Hallhof 6-7, 87700 Memmingen, Germany (professional representative)

a g a i n s t

Adam Olszewski, Plac Oleandrów 13, 45-220 Opole, Poland (applicant), represented by Kancelaria Patentowa Wojciech Lech, ul. Architektów 1/8A, 85-804 Bydgoszcz, Poland (professional representative).

On 29/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 633 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 450 909 ‘MAX BAU’ (word mark). The opposition is based on European Union trade mark registration No 10 750 289 ‘Max Wild’ (word mark). The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 and services

The goods and services on which the opposition is based are the following:

Class 19: Building materials, not of metal; houses, transportable houses and buildings; pre-fabricated buildings; prefabricated components for prefabricated houses; prefabricated garages and indoor pools; windows, doors, stairs, floor and wall coverings, balcony panelling; prefabricated chimneys; roofings and roof coverings; summer houses; all the aforesaid goods not of metal; timber, at least semi-worked, in particular beams, boards and panels; natural and artificial stone; tiles; recycled building materials, not of metal; gravel.

Class 37: Building construction, repair, installation services, pipeline construction; demolition, demolition work; remediation of contaminated sites; construction of dams; construction of tips; pipeline construction; earth-moving; burst-lining; fix, care, maintenance, maintenance of vehicles of all kinds; operation of workshops; drilling, horizontal drilling; metalworking; processing of subsoil; assembly of prefabricated houses; construction supervision, namely construction of buildings ready for occupancy; structural and civil engineering; construction of turnkey buildings; installation and assembly of lighting, heating, ventilating and air-conditioning installations; sanitary facilities and installations and lightning protection installations; plumbing; gas and water installation services, electric installation; painting, lacquering and wallpapering, stucco, plastering and rough casting services; carpentry, roofing, insulating; glazier services, flooring and tiling, tile-laying; masonry; construction of staircases; tunnelling construction, well drilling.

Class 39: Transport, logistical fleet management, for others; packaging and storage of goods; travel arrangement; logistics in the transport sector, in particular warehouse logistics, contract logistics, procurement logistics, distribution logistics, packing logistics, returns logistics, trade fair and event logistics; planning logistics processes (incoming goods, storage, packaging, labelling, shipping), in the context of logistics in the transport sector; information relating to logistics processes (incoming goods, storage, packaging, labelling, shipping), in the context of logistics in the transport sector; information on transport and warehousing; forwarding agency services; freight brokerage services; freight handling; transport brokerage; services for the storage of goods; logistical services, namely storage and stock management, incoming and outgoing goods management; rental of warehouses and storage containers; logistics, namely collection, transport and delivery of goods; logistics services for others, namely order entry, storage management, incoming and outgoing goods management; managing the complete logistics process, for others; logistics in the field of air and marine transport; logistics consultancy; landfill operation; short-distance and long-distance traffic; heavy transports.

Class 42: Construction and design planning and consultancy; architecture; construction supervision and building development, namely planning and implementation of building projects with regard to technical matters; creation of data-processing programs; engineering, in particular development engineering and planning engineering; system development; civil engineering services, in particular for earth-moving, drilling technology; architecture, styling, interior design services; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; design engineering services, namely development, planning and construction of building machines, detecting the use and/or application parameters of building machines; technical fleet management, for others.

The contested services are the following:

Class 37: Building, construction and demolition; paving contractor services; laying of cable; pipeline installation and repair; installation of gas and water pipelines; civil engineering construction; installation of plumbing; installation of heating and cooling apparatus; installation, maintenance and repair of air-conditioning apparatus; electric appliance installation and repair; services for the rental of machinery for civil engineering; rental of construction equipment; rental of construction and building equipment; installation of industrial machinery; asphalting.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

Some of the contested services are identical or similar to goods and services on which the opposition is based (e.g. the contested building, construction and demolition; installation of gas and water pipelines; civil engineering construction include, are included in, or overlap with, the opponent’s services in Class 37, and are, therefore, identical to them). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to the goods and services of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical 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 and services, the frequency of purchase and their price.

c) The signs

Max Wild	MAX BAU
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).

Due to the structure of the signs, a substantial part of the relevant public throughout the European Union will perceive both of them as referring to a name (first name/forename and surname) of a male person. More specifically, the element ‘MAX’, contained in both signs, will be perceived as the succinct form of the Christian male first name ‘Maximilian’ (06/02/2002, R 729/2001‑3, MAXTECH / MAXDATA, § 42-43). The first name ‘Max’ or ‘Maximilian’ is common and widely used in the relevant territory. The elements ‘Wild’ of the earlier mark and ‘BAU’ of the contested sign will be perceived as surnames as they follow the first name ‘MAX’, regardless of whether they are commonly used surnames in some territories of the European Union. Since neither ‘MAX’ (as a first name) nor ‘Wild’ and ‘BAU’ (as surnames) relates to the goods and services in question, they are distinctive. The same applies to the distinctiveness of the signs as a whole, that is to say, both are distinctive for the goods and services in question for a substantial part of the relevant public.

However, family names (surnames) have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first name may belong to a great number of people who have nothing in common, whereas the presence of the same surname could imply the existence of some link between them (identity of the persons or a family link).

Nevertheless, the remaining part of the relevant public will not see the signs (or one of them) as referring to names (or a name), but rather as a combination of their (its) individual elements. In such a scenario, the coinciding verbal element ‘MAX’ will be understood as the common abbreviation of the universally understandable term ‘maximum’ (or of its similar equivalents in various European languages such as maximum in French, maxima in German, maximálny in Slovak, máximo in Spanish, etc.), which is often used in trade in order to designate superlative qualities of any given goods or service, such as the highest, furthest or greatest. Therefore, under these circumstances, this element is considered laudatory and therefore non-distinctive (28/10/2010, T‑131/09, Botumax, EU:T:2010:458, § 44 and 09/03/2017, T‑400/16, MAXPLAY, EU:T:2017:152, § 32).

Furthermore, for the public that does not perceive the marks as names, the verbal elements ‘Wild’ and ‘BAU’ are meaningless, except for the English- and German-speaking parts of the public, who will both understand the meaning of the element ‘Wild’, whilst the element ‘BAU’ will be only understood by the German-speaking public.

In English and German, ‘Wild’ means ‘uncontrolled, violent, or extreme; used to refer to plants or animals that live or grow independently of people, in natural conditions and with natural characteristics’ (information extracted from Cambridge Dictionary on 25/09/2020 at https://dictionary.cambridge.org/dictionary/english/wild). Some English- and German-speaking consumers may, therefore, perceive the earlier mark as referring to a maximum of wild/wildness or maximal wild/wildness, instead of perceiving it as a male name.

Irrespective of whether it is understood, the verbal element ‘Wild’ (alone or in combination with ‘Max’) of the earlier mark is distinctive.

For the German-speaking part of the relevant public, the contested sign is not likely to be perceived as a male name. This is because ‘BAU’ is the German noun for ‘building, erecting, manufacturing; the way in which something is built’ (information extracted from Duden on 25/09/2020 at https://www.duden.de/suchen/dudenonline/bau). Therefore, this element is found to be non-distinctive for German-speaking consumers as it describes the kind and purpose of the relevant services, essentially covering building and construction services, and the related installation, maintenance, repair and rental services. However, these consumers will perceive the preceding element ‘MAX’ as an adjective referring to the best qualities of the services defined by the noun ‘BAU’ and, therefore, as equally non-distinctive. Overall, the contested sign in its entirety has a weak distinctive character for the German-speaking part of the public.

The element ‘BAU’ (alone or in combination with ‘MAX’) is distinctive for the non-German-speaking part of the public in the relevant territory.

The opponent argues that the verbal element ‘MAX’ is the dominant element of the signs. However, the Opposition Division reminds that by definition, word marks have no dominant element. Therefore, this argument of the opponent is irrelevant.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the verbal element ‘MAX’ and its sound. They differ in their second verbal elements, ‘Wild’ in the earlier mark versus ‘BAU’ in the contested sign, and their sounds.

Therefore, and taking into account the above considerations on the perception of the signs and their particular elements as well as the distinctiveness thereof, the signs are visually and aurally similar to a very low degree.

Conceptually, as outlined above, a significant part of the public in the relevant territory will associate the signs with full names of two different male persons. However, the mere fact that two names can be grouped under a common generic term of ‘names’ does not constitute conceptual similarity. In particular, in the case of names containing two different surnames (as is the case at hand), the public is not likely to make a conceptual link between the two words, since there is no reason to assume a link between two people with different surnames. Therefore, the signs are not conceptually similar for this part of the public.

For the part of the public who will perceive only the concept in the coinciding element ‘MAX’ (standing for ‘maximum’), the signs are conceptually dissimilar as they overlap in a non-distinctive element.

Likewise and for the same reason, the signs are conceptually dissimilar for those English-speaking consumers who, as well as perceiving the concept of the coinciding element ‘MAX’ (standing for ‘maximum’), will perceive the concept of the additional verbal element ‘Wild’ (distinctive element) in the earlier mark and therefore understand this mark as referring to the maximum/maximal of wild/wildness.

Finally, regardless of whether the earlier mark is seen as a male name or as a maximum/maximal of wild/wildness, the German-speaking part of the public will perceive the contested sign as referring to a maximum/maximal building or construction. Therefore, the signs are conceptually dissimilar 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not, within the relevant time limit until 10/08/2019, file any evidence in order to prove such a claim.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) 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 that can be made with the registered mark and 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).

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 are from the same or economically linked undertakings.

As concluded above, the contested services are assumed to be identical to the opponent’s goods and services and they target the public at large and business customers, who have an average to high degree of attention. The earlier mark has a normal degree of inherent distinctiveness.

The signs in question are visually and aurally similar to a very low degree and conceptually either not similar or dissimilar, as explained above in section c) of this decision.

Contrary to the opponent’s arguments, although the signs have the verbal element ‘MAX’ in common, and this word is at the beginning of both signs, this is not sufficient for the relevant public to be confused with regard to the origin of the goods and services. Admittedly, although the beginning of a sign may be more likely to catch the consumer’s attention than the elements that follow, it is only a general rule and does not apply in this case (14/10/2003, T‑292/01, Bass, EU:T:2003:264, § 50; 06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48). Furthermore, such a rule must always be subordinated to the principle that it is necessary to take into account the overall impression given by the signs when examining their similarity, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

It must be taken into account that there is a notable difference between the signs from a semantic perspective. As previously stated, for a substantial part of the relevant public, the coinciding element ‘MAX’ is a common first name, but the additional elements, ‘Wild’ and ‘BAU’, are recognised as surnames, and have a higher intrinsic value as indicators of the origin of the goods and services and, therefore, create a sufficient difference between the marks. As a direct consequence, consumers will focus their attention not on the first name ‘MAX’, but on the surnames, ‘Wild’ or ‘BAU’. This difference is of particular importance since it produces a conceptual difference between the signs and will therefore help consumers to differentiate between them.

Even when a part of the relevant public does not perceive the signs (or one of them) as names (or a name), the fact remains that the coinciding element ‘MAX’ is non-distinctive for this part of the public. According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 814/2001‑3, ALL-DAY AQUA / Krüger All Day (FIG. MARK), § 50; and 14/05/2001, R 257/2000‑4, FIG./COLOUR MARK (e plus) / PLUS, § 22). This applies in the present case, where the differences between the signs (especially the difference in the distinctive element ‘Wild’ of the earlier mark) are clearly perceivable and sufficient to enable the relevant public, even with an average degree of attention, to safely distinguish between them.

When encountering the conflicting signs, the relevant public will pay less attention to the non-distinctive element that the signs have in common and will mentally register the differences, even though they are in the second part of the signs (and even if some of them are equally non-distinctive, e.g. the element ‘BAU’ when understood by the German-speaking public). Therefore, the differences between the signs, as indicated above, are sufficient to enable the relevant public, not only business customers but also the public at large, to safely distinguish between them. This is all the more valid considering the higher-than-average degree of attention that a part of the public will display. As a consequence, a likelihood of confusion between the signs can safely be ruled out, despite the assumed identity between the goods and services at issue.

Consequently, it is concluded that the average consumer, who, for the purposes of the assessment of likelihood of confusion, is considered reasonably well informed and reasonably observant and circumspect, will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or from economically linked undertakings.

In its submissions, the opponent refers to the principle of imperfect recollection of the signs, taking into account that average consumers rarely have the chance to make a direct comparison between different marks. When assessing the likelihood of confusion, the Opposition Division has taken this principle into consideration. However, bearing in mind all the relevant circumstances of the case, the Opposition Division finds that, contrary to the opponent’s view, the dissimilarities between the signs at issue are sufficient to exclude a likelihood of confusion.

The opponent also refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has also taken this principle into account when assessing the likelihood of confusion. However, as a matter of fact, the assumed identity between the goods and services in the present case cannot compensate for the differences identified between the signs since these are clearly perceptible and will not go unnoticed.

Considering all the above, even assuming that the goods and services in question are identical, there is no likelihood of confusion (including likelihood of association) on the part of the public in the relevant territory. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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, 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

Angela DI BLASIO

Martin MITURA

Christian STEUDTNER

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.