OPPOSITION No B 3 083 884

Excluton B.V., Waalbandijk 155, 6651 KD Druten, Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative)

a g a i n s t

Roadstone Limited, Fortunestown 24, Tallaght, Ireland (applicant), represented by F.F. Gorman & Co., 15 Clanwilliam Square, 2 Dublin, Ireland (professional representative)

On 21/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 884 is upheld for all the contested goods.

2. European Union trade mark application No 18 009 914 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 in Class 19 of European Union trade mark application No 18 009 914 ‘ABBEYSTONE’. The opposition is based on Benelux trade mark registration No 956 694 ‘ABBEYSTONES’. The opponent invoked Article 8(1)(a) and (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: Bricks for street and house construction, for embankments (shores) and for railway dikes and railway yards.

The contested goods are the following:

Class 19: Non-metallic building, construction and civil and structural engineering materials; road making, road marking, road coating and road repair materials; road, airport runway, race-track and playground surfacing materials; blocks, bricks, tiles, slates, lintels, flags, slabs, paving sets, posts, dense concrete masonry and non-metallic cladding for walls and roofs; non-metallic building blocks; concrete blocks; masonry blocks; paving blocks; aggregates for concrete, filling, foundations and road making; rock, stone, crushed stone, fine stone powder, pebbles, sand, gravel and slag; asphalt, tarmacadam, pitch and bitumen; natural stone, artificial and reconstituted stone; porous asphalt; polymer modified binders; and concrete, ready mixed concrete, mortar, plaster, gypsum, cement and wall rendering and lining materials

The contested goods all belong to the category of non-metallic building materials. The opponent’s goods belong equally to this sector on the market. It cannot be excluded that the contested goods, apart from their nature and purpose, coincide in numerous other criteria or even may be identical: they are - at least - produced by the same companies, target the same end user and are being sold in the same places. Based on this conclusion, none of the contested goods can be considered dissimilar.

It follows, therefore, that all the contested goods are at least similar to the opponent’s goods.

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 at least similar are directed at the public at large and professionals in the building industry with specific professional knowledge or expertise.

The degree of attention may vary from average to high.

3. The signs

ABBEYSTONES	ABBEYSTONE
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

The only difference between the signs is the letter ‘S’ at the end of the opponent’s mark. This difference, which may or may not be seen as a plural form, has barely impact (if any) on the visual, aural and - if a meaning were to be attributed to the words - conceptual comparison of the signs.

Therefore, the marks are highly similar.

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

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).

The goods have been found at least similar. The signs are almost identical and the earlier mark enjoys a normal degree of distinctiveness.

The only differing element of the earlier mark, namely the letter ‘S’ at the end can easily be overlooked. The near identity of the signs justifies the conclusion that there is a likelihood of confusion, including for the consumer with a high level of attention. It is highly likely that the relevant consumer may be led to believe that the same undertaking is responsible for the production of those goods.

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

Therefore, the opposition is well founded and it follows that the contested trade mark must be rejected in its entirety.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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, 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

Loreto URRACA LUQUE

Cynthia DEN DEKKER

Christophe DU JARDIN

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.