OPPOSITION No B 3 086 561

Brillux GmbH & Co. KG, Weseler Str. 401, 48163 Münster, Germany (opponent), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft MbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative)

a g a i n s t

Guangdong Yi Tiancheng Trading Co.,Ltd, Room 218, block 14, 13th lvjing East Road, Chancheng District, Foshan City, Guangdong, People’s Republic of China (applicant), represented by Katerina Grišina, Anninmuizas Bulvaris 41-111, LV-1067 Riga, Latvia (professional representative).

On 15/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 561 is partially upheld, namely for the following contested goods:

Class 19: Mosaics for building; roofing shingles; tiles, not of metal, for building; bricks; ceramic tiles.

2. European Union trade mark application No 18 035 501 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 035 501 ‘SCALA ITALY’, namely against all the goods in Classes 11 and 19. The opposition is based on German trade mark registration No 30 2015 105 193, ‘Scala’ for goods and services in Classes 2, 3, 6, 7, 8, 16, 17, 19, 27, 35, 37, 39 and 41 and international registration No 1 321 683 for the word ‘Scala’ designating the European Union, for goods and services in Classes 2, 3, 6, 7, 8, 9, 16, 17, 19, 21, 24, 27, 35, 37, 39 and 41. 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 and services

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

1. German trade mark registration No 30 2015 105 193

As a preliminary remark, it should be noted that the opposition is based on all the goods and services for which the two earlier marks are registered and that the opponent provided an incomplete translation of the list of goods and services of earlier German mark No 30 2015 105 193 in that the specification of services in Class 37 is actually a copy of the services in Class 35. Moreover, this discrepancy appears both in the notice of opposition and the opponent’s observations filed on 07/11/2019. Although it is apparent that the opponent’s intention was to invoke the services included in Class 37, since the opponent did not submit the correct translation of Class 37 of the German trade mark within the time limit for substantiation, and did not express any intention to correct it during the opposition proceedings, the comparison of the goods and services has been carried out by the Opposition Division based on the translations submitted in the notice of the opposition and the opponent’s observations.

Class 2: Metal and sheet metal in powder form for painters and decorators.

Class 3: Bleaching and cleaning preparations for painting and plastering; cleaning, polishing, scouring and abrasive preparations for painting and plastering; paint stripper.

Class 6: Sealing profiles, containers, silos, tanks and containers, including closures therefor, all the aforesaid goods of metal.

Class 7: Painting and plastering machines; construction machines; compressors, pumps, trueing machines, milling cutters, beaters, spray paint and lacquering devices, mechanical adhesive devices for wall hangings, mechanical application devices for primers, paints and other coating materials, cleaners, covering devices for painting, the aforesaid goods included in this class.

Class 8: Hand tools, hand-operated, for painting and decorating; cutlery.

Class 16: Adhesives for stationery, rollers for applying paints and other coating materials; cards and sheets for measuring colour.

Class 17: Insulating materials; insulating boards; composite heat insulation systems; plastics being semi-finished goods in the form of films; stopping and insulating materials; glass fibers for use in the manufacture of building insulation materials, namely, insulating paints; sealing profiles of plastic and substitutes thereof; flexible pipes, not of metal.

Class 19: Asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; facing plates of foam layered with mortar, with or without decorative coating; façade mortar; coatings (building materials); smooth plaster; plaster for facing; plaster filling agents; screed; fillers (coatings) for smoothing and repairing rough subsurfaces; rails, not of metal, for hanging pictures and corner protection rails (not of metal, for building), plaster; plaster for facing; plaster filling agents; screed; fillers (coatings) for smoothing and repairing rough subsurfaces; rails, not of metal, for hanging pictures and corner protection rails (not of metal, for building).

Class 27: Wall hangings (non-textile); carpets, rugs, mats and matting, linoleum and other materials for covering existing floors.

Class 35: Advertising, market research, business consultancy; wholesaling and retailing of paints, lacquers, plasters, painting, plastering and DIY requisites, wall and floor coverings, paint brushes and other paint applying utensils, building materials and tools for painting and plastering.

Class 37: Advertising, market research, business consultancy; wholesaling and retailing of paints, lacquers, plasters, painting, plastering and DIY requisites, wall and floor coverings, paint brushes and other paint applying utensils, building materials and tools for painting and plastering.

Class 39: Transport; packaging and storage of goods; rental and transport of storage containers and silos.

Class 41: Arranging of seminars; instruction and providing of training with regard to manual labour, as well as advertising, marketing, organisation, administration, electronic data processing; publication of printed matter in electronic form, including on the Internet; services of a publishing firm except printing.

2. International registration No 1 321 683 designating the European Union

Class 2: Paints, lacquers, varnishes; preservatives against rust and against deterioration of wood; primers being paints; wood mordants, metal and sheet metal in powder form for painters and decorators, fillers for smoothing and renovation of a rough surface; wood mordants; metals in foil and powder form for painters and decorators; flat-coat paints for smoothing and repairing rough subsurfaces; coating preparations of plastic being a paste or liquid for surfaces of wood and metal for protection against damp, included in this class; mackle, easy to apply.

Class 3: Turpentine being natural resin (for degreasing); bleaching and cleaning preparations for painting and plastering; cleaning, polishing, scouring and abrasive preparations for painting and plastering; paint stripper.

Class 6: Metal building materials; ironmongery, small items of metal hardware; nails for plastering, pegs, connector blocks, corner protection rails and sealing profiles, containers, silos, tanks and containers, including closures therefor, all the aforesaid goods of metal; metal picture hangers and corner protection rails (of metal, for building).

Class 7: Painting and plastering machines; construction machines; compressors, pumps, trueing machines, milling cutters, beaters, spray paint and lacquering devices, mechanical adhesive devices for wall hangings, mechanical application devices for primers, paints and other coating materials, cleaners, covering devices for painting, the aforesaid goods included in this class.

Class 8: Hand tools, hand-operated, for painting and decorating; cutlery.

Class 9: Recorded and downloadable computer software and computer programs, in particular including apps for mobile radio apparatus; apps (computer software) for mobile terminals; web application software; electronic publications (downloadable); downloadable image, audio and video files; electronic and/or opto-electronic instruments for the determination of colors (color measuring instruments).

Class 16: Printed matter and printed publications; information periodicals for craft purposes; brochures; books; diagrams; graphic representations; manuals; calendars; prospectuses; circulars; magazines [periodicals]; instructional and teaching material (except apparatus); paper, cardboard and goods made from these materials (included in this class); covering paper, painters’ brushes, adhesives for stationery, rollers for applying paints and other coating materials; cards and sheets for measuring colour.

Class 17: Insulating materials; insulating boards; composite heat insulation systems; plastics being semi-finished goods in the form of films; stopping and insulating materials; glass fibers for use in the manufacture of building insulation materials, namely, insulating paints; sealing profiles of plastic and substitutes thereof; flexible pipes, not of metal.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; facing plates of foam layered with mortar, with or without decorative coating; façade mortar; coatings (building materials); smooth plaster; plaster for facing; plaster filling agents; screed; fillers (coatings) for smoothing and repairing rough subsurfaces; rails, not of metal, for hanging pictures and corner protection rails (not of metal, for building).

Class 21: Paint grids.

Class 24: Textile wall hangings as far as included in this class.

Class 27: Wall hangings (non-textile); carpets, rugs, mats and matting, linoleum and other materials for covering existing floors.

Class 35: Advertising, market research, business consultancy; wholesaling and retailing of paints, lacquers, plasters, painting, plastering and DIY requisites, wall and floor coverings, paint brushes and other paint applying utensils, building materials and tools for painting and plastering.

Class 37: Building construction; repair, namely, renovation and maintenance of buildings; installation services; manual labour, namely, renovation, maintenance and repair of buildings, and manual labour in the form of painting, plastering, dry mortarless construction and bricklaying.

Class 39: Transport; packaging and storage of goods; rental and transport of storage containers and silos.

Class 41: Arranging of seminars; instruction and providing of training with regard to manual labour, as well as advertising, marketing, organisation, administration, electronic data processing; publication of printed matter in electronic form, including on the Internet; services of a publishing firm except printing.

The contested goods are the following:

Class 11: Bath tubs; toilets [water-closets]; bath fittings; urinals being sanitary fixtures; bidets.

Class 19: Mosaics for building; roofing shingles; tiles, not of metal, for building; bricks; ceramic tiles.

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 ‘including’, 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.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 11

The contested bath tubs; toilets [water-closets]; bath fittings; urinals being sanitary fixtures; bidets are specific sanitary installations and parts of them found in bathrooms. The opponent’s goods consist in general of paints and substances used for making paints, painting and lacquering devices and hand tools, metallic containers and tanks, adhesives, insulating materials, pumps, pipes and coatings (building materials), non-metallic transportable buildings and monuments or wall and floor coverings in Classes 2, 3, 6, 7, 8, 16, 17, 19 and 27 covered by both earlier marks. The goods are dissimilar. Contrary to the opponent’s argument that the compared goods clearly fall into the area of building materials and building construction products, the goods have a different nature and purpose. The contested goods in that class are not building materials but sanitary installations and parts thereof. Their methods of use are also different as the contested goods are used in the bathroom for taking a bath or for physiological needs, which is not the case for the opponent’s goods.

Although it is not excluded that some of the opponent’s goods, such as pumps in Class 7, flexible pipes, not of metal in Class 17 covered by both earlier marks, or non-metallic rigid pipes for building covered by earlier mark (2), are used for the installation of the contested goods in Class 11, this is not sufficient to conclude that the goods are complementary. Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44).

The same conclusion of dissimilarity applies to the comparison between the contested bath tubs; toilets [water-closets]; bath fittings; urinals being sanitary fixtures; bidets in Class 11 and the opponent’s building materials (non-metallic) in Class 19 covered only by earlier mark (2), which covers in general materials, not of metal, for building and construction, such as semi-worked woods for use in building, wood veneers, building glass, glass granules for marking out roads, granite, marble, gravel, terra-cotta for use as a building material, roofing, not of metal, gravestones and tombs, not of metal, geotextiles or coatings. These goods have a different nature and purpose, and methods of use. The producers are also different.

Although, it is also not excluded that some goods are found in the same shops such as DIY shops, the goods in question are not displayed next to each other as they are normally found in different departments. Moreover, even though, as the opponent argues, the customers could be the same, they will not expect that the contested goods in Class 11 to be produced by companies that usually manufacture the opponent’s goods in Classes 2, 3, 6, 7, 8, 16, 17, 19 and 27 and the consumers will not assume a common commercial origin.

The opponent’s goods in Classes 9, 21 and 24, which are covered only by earlier mark (2), have a different nature and purpose. The goods may coincide in the relevant public, but the relevant public will not expect these goods to be produced by the same companies. Moreover, although the goods could be found in the same distribution channels, they are sold in different sections. Therefore, the opponent’s goods in Classes 9, 21 and 24 are also dissimilar to all the contested goods in Class 11.

The contested goods in Class 11 are also dissimilar to the opponent services in Classes 35, 39 and 41 covered by both marks. The goods and services have a different nature and purpose. Although, they might target the same public: the public at large, their usual producers/providers are different and they are not complementary or in competition.

Regarding the opponent’s wholesaling and retailing of paints, lacquers, plasters, painting, plastering and DIY requisites, wall and floor coverings, paint brushes and other paint applying utensils, building materials and tools for painting and plastering in Class 35 covered by both marks, it should be mentioned that similarity is found between the retail services of specific goods and those specific goods where the goods are commonly retailed together in the same outlets and target the same public. However, the degree of similarity between the retail of specific goods and the retail of other specific goods may vary depending on the degree of similarity of the retailed goods and the particularities of the respective market sectors. As detailed above, the contested goods in Class 11 are sold in different areas from the opponent’s paints, lacquers, plasters, painting, plastering and DIY requisites, wall and floor coverings, paint brushes and other paint applying utensils, building materials and tools for painting and plastering.

Finally, the contested goods in Class 11 are dissimilar to the opponent’s services in Class 37, covered by earlier mark (2), especially to renovation and maintenance of buildings. The contested goods are provided by specialists in the construction industry whose business is not the manufacture and sale of the goods such as bath tubs; toilets [water-closets]; bath fittings; urinals being sanitary fixtures; bidets. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition.

Contested goods in Class 19

The contested mosaics for building are included in the broad category of, or overlap with, the opponent’s coatings (building materials) covered by earlier mark (1). Therefore, they are identical.

The contested roofing shingles; tiles, not of metal, for building; bricks; ceramic tiles overlap with the opponent’s coatings (building materials) covered by earlier mark (1) as it is not excluded that the contested goods could be used as coatings for buildings. Therefore, they are identical.

General conclusion on the comparison of goods and services

No similarity could be found between all the contested goods in Class 11 and the goods and services covered by the earlier marks, especially by international registration No 1 321 683 designating the European Union. The fact that the earlier international registration is under opposition does not affect the outcome of the decision, as the contested goods in Class 19 were found to be identical with the opponent’s goods covered by earlier German trade mark registration No 30 2015 105 193.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise from construction industry.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Scala	SCALA ITALY
Earlier trade marks	Contested sign

The relevant territory is Germany and 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 the marks are word marks. The protection of a word mark concerns the words as such, therefore, it is irrelevant for the purposes of the comparison of word marks if one of them is written in title-case letters and the other in upper-case letters.

The coinciding element ‘SCALA’ will be perceived by the majority of the relevant public as the famous Scala opera house in Milan. Nevertheless, it is very likely that some parts of the relevant public, such as the English-, German-, Italian- or Romanian-speaking parts of the public, will also associate the word ‘SCALA’ with (1) ‘a scale (composed of lines and numbers) on measuring instruments’, (2) ‘a complete range of associated, graduating occurrences/aspects, for example colours, like a spectrum of browns’, (3) in music it refers to ‘a scale of notes’ (information extracted from Duden on 14/04/2020 at https://www.duden.de/rechtschreibung/Skala), because the word exists as such (in Italian and Romanian) or there is a similar word, namely ‘scale’ (in English) or skala (in German). As the word is not descriptive, allusive or otherwise weak in relation to the relevant goods, namely mosaics for building; roofing shingles; tiles, not of metal, for building; bricks; ceramic tiles or coatings (building materials), it is considered distinctive.

The verbal element ‘ITALY’ of the contested mark, despite being an English word, will be understood by the relevant public as reference to a European country on the Mediterranean coast. Furthermore, the word ‘Italy’ is commonly used in Member States of the European Union. This word is non-distinctive with regard to the goods concerned as it may be perceived as indicating the geographical origin of the goods.

Visually and aurally, the signs coincide in the verbal element ‘SCALA’, which is the entire earlier marks and the sole distinctive element in the contested sign. They differ in the second verbal element ‘ITALY’ of the contested mark, which is non-distinctive.

The signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As all the signs will be associated with the same concept(s) as explained above, and considering that the additional element ‘ITALY’ of the contested mark is non-distinctive, the signs are conceptually similar to a high degree, if not identical.

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 did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical and partly dissimilar, and they target the public at large and professionals, whose degree of attention in relation to the goods may vary from average to high. The earlier marks have an average degree of inherent distinctiveness, which affords them a normal scope of protection.

As explained in detail in section c) of this decision, the signs are visually and aurally similar to a high degree, while conceptually the signs are similar to a high degree, if not identical. The only difference between the signs lies in the final additional verbal element ‘ITALY’ of the contested mark, which is non-distinctive. Therefore, its presence does not create a significant difference between the signs and is clearly not sufficient to exclude a likelihood of confusion.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, on the part of the public and the opposition is partly well founded on the basis of the opponent’s trade mark registrations No 30 2015 105 193 and international registration No 1 321 683 designating the European Union.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marine DARTEYRE

Francesca DRAGOSTIN

Rasa BARAKAUSKIENE

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.