OPPOSITION Nо B 3 088 066

 

Veka AG, Dieselstr. 8, 48324 Sendenhorst, Germany (opponent), represented by rwzh Rechtsanwälte Wachinger Zoebisch Partnerschaft mbB, Barthstrasse 4, 80339 München, Germany (professional representative) 

 

a g a i n s t

 

SAS Veta France, 690 Avenue Charles Pecqueur (D188) Zone Industrielle, 62620 Ruitz, France (applicant), represented by Selarl Vinchant Lamoril, 2 bis Grand'Place, 62000 Arras, France (professional representative).

On 18/12/2020, the Opposition Division takes the following

DECISION:

1.

Opposition No B 3 088 066  is partially upheld, namely for the following contested goods and services: Class 17: All contested goods in this class. Class 19: Building materials, not of metal; Concrete; Cement. Class 37: Construction information; Masonry; Plastering; Plumbing; Roofing services; Building sealing; Demolition of buildings; Construction services. .

2. European Union trade mark application No 18 039 220 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 039 220  (figurative mark). The opposition is based on, inter alia, European Union Trade Mark registration No 4 689 361, ‘VEKA’ (word mark). in relation to which the opponent invoked Article 8(1)(b) EUTMR. Furthermore, the opponent invoked Article 8(4) EUTMR in relation to another earlier right, namely its company name ‘VEKA’.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 689 361 ‘VEKA’.

a) The goods and services

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

Class 1: Plastic mixtures.

Class 17: Plastic products in the form of profiles, shaped seals for the aforesaid products, shaped parts (semi-finished goods), plates.

Class 19: Building materials, windows, roller blinds and doors of plastic, plastic window systems, plastic door systems and plastic roller blind systems, folding shutters, roofs, covers and wall coverings of plastic, profiles, seals and plates of plastic, all the aforesaid goods for building; fences, railings, balustrades, floorboards and partitions of plastic, and connectors and fittings therefor, included in class 19.

Class 37: Assembly and installation of windows, doors, roller blinds, folding shutters, roofs, fences, covers and wall coverings for building; providing information material and support for the aforesaid activities, and for the processing of plastic plates for building.

The contested goods and services are the following:

Class 17: Weatherstripping compositions; Synthetic resins, semi-processed; Glass wool for insulation; Caulking materials; Insulating materials; Fibreglass for insulation.

Class 19: Building materials, not of metal; Monuments, not of metal; Buildings, not of metal; Concrete; Cement.

Class 37: Construction of bridges; Road construction; Construction information; Building construction supervision; Masonry; Plastering; Plumbing; Roofing services; Building sealing; Demolition of buildings; Rental of construction equipment; Construction services.

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.

It is also reminded that the comparison of goods and services must be based on the wording used in the lists of goods and/or services in question, that is, for which the trade mark is registered or for which registration is sought. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s arguments on the way of production and commercialisation of the goods in question must be set aside.

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 17

The contested weatherstripping compositions; glass wool for insulation; caulking materials; insulating materials; fibreglass for insulation are all sealing and insulating materials. ‘Weatherstripping’ is the process of sealing openings such as doors, windows, and trunks to protect against the outside weather. The term can also refer to the materials used to carry out such sealing processes. Caulking materials are materials used to seal joints or seams against leakage in buildings, structures and piping.

The contested weatherstripping compositions; glass wool for insulation; caulking materials; insulating materials; fibreglass for insulation are all used to seal and insulate buildings. Insulation and barrier articles and materials in Class 17 have the same purpose and nature as the opponent’s building materials in Class 19. Moreover, they usually coincide in producer, relevant public and distribution channels. Therefore, these goods are highly similar.

The opponent’s plastic products in the form of profiles are semi-processed products of plastic. These goods and the contested synthetic resin, semi-processed may be manufactured by the same companies for the attention of the same professional public. They also coincide in their distribution channels and in their purposes. Therefore they are highly similar.

Contested goods in Class 19

The contested building materials, not of metal includes, as a broader category, or overlaps with, the opponent’s term building materials of plastic. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested concrete; cement are building materials. The opponent’s building materials of plastic are building materials, too. The fact that they are manufactured of different raw materials does not play a role considering that these goods may be manufactured by the same companies and envisage same professional public. They also coincide in their distribution channels and in their purposes. Therefore they are highly similar.

The contested buildings, not of metal encompass, for instance, wooden buildings; mobile homes; log cabins; prefabricated houses of wood; sheds, not of metal as well as all kinds of buildings made of plastics such as shelters, portable offices, toilet blocks, toilet cabins and portable toilets.

Firstly, as regards the opponent’s Class 1 and Class 17 goods, plastic mixtures in Class 1 and plastic products in the form of profiles, shaped seals for the aforesaid products, shaped parts (semi-finished goods), plates in Class 17 are all semi-finished products manufactured to be built into window, door, roller blinds and shutter systems produced by companies specialised in the manufacturing of these products which, in turn, are sold to the end consumer (which might be construction companies, developers or a private person). Thus, the relevant public for the opponent’s goods in Classes 1 and 17 are professionals from a specific industry while the public for the contested buildings, not of metal, and monuments not of metal is made up of the aforementioned customers who, among other things, purchase windows, doors etc. The goods are not sold through the same channels and are produced by different manufacturers. Diverging publics weigh heavily against similarity. In addition, the goods do not share purpose, method of use and have a different nature. Thus, these goods are not similar.

Secondly, the contested buildings, not of metal and all of the opponent’s goods in Class 19 differ in their nature and they have different specific purposes and methods of use. Even if buildings are (among others) made of building materials of plastics in Class 19, this is insufficient to consider these similar to buildings, not of metal. The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Buildings and monuments may have doors, balustrades or fences, which are also mentioned in the opponent’s Class 19, but this is not sufficient for the aforementioned reasons (and even less for fences of plastic). Moreover, and more importantly, they do not coincide in their usual commercial origin. These goods are not in competition either. All the aforementioned applies to monuments, not of metal as well.

Finally, as regards the opponent’s Class 37, the above mentioned buildings and monuments are not similar to assembly and installation of windows, doors, roller blinds, folding shutters, roofs, fences, covers and wall coverings for building; providing information material and support for the aforesaid activities, and for the processing of plastic plates for building for which the opponent’s trade mark is registered in Class 37. By their nature, goods are generally dissimilar to services. That said, they can be complementary. However, in the present case, the contested goods are not the subject of the opponent’s services and thus there is no complementarity. In addition, these goods and services do not stem from the same provider and are consequently not offered through the same commercial channels.

Therefore, the contested buildings, not of metal and monuments, not of metal are dissimilar to all of the opponent’s goods and services.

Contested services in Class 37

The contested construction services and roofing services include, as a broader category, or overlap with, the opponent’s assembly and installation of roofs for building in Class 37. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested construction information includes, as a broader category, or overlap with, the opponent’s providing information material and support for the aforesaid activities, and for the processing of plastic plates for building. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested masonry; plastering; plumbing; building sealing are commonly provided by construction companies, which also offer the opponent’s assembly and installation of roofs, fences, covers and wall coverings for building in Class 37. The services have the same purpose and nature. Moreover, they usually coincide in producer, relevant public and distribution channels. Therefore, these services are highly similar.

The contested demolition of buildings, despite not having the same nature and the purpose as the opponent’s assembly and installation of roofs, fences, covers and wall coverings for building in Class 37, given that one is directed at destroying an existing building, while the other at putting together or finishing up certain parts of a building in the construction process, they do normally originate from the same providers and target the same consumers. They are consequently also offered through the same distribution channels. Therefore, they are similar.

The contested rental of construction equipment are services provided by specialist companies which often also manufacture the equipment. These services and the opponent’s services in Class 37 are provided by different undertakings and their trade channels are different. They are also offered to different publics as construction equipment is usually rented to construction companies while the opponent’s services are provided to consumers who commission buildings but who do not rent the equipment themselves. Moreover, and in line with the aforesaid, the services are not complementary or in competition to the opponent’s services in Class 37. Consequently, they are dissimilar.

The contested construction of bridges; road construction are provided by specialised architect studios, engineering companies and highly specialised construction companies. Architects and construction engineers also offer the contested building construction supervision. These services have no relevant points in common with the opponent’s assembly and installation of windows, doors, roller blinds, folding shutters, roofs, fences, covers and wall coverings for building; providing information material and support for the aforesaid activities, and for the processing of plastic plates for building. The latter are provided by companies specialized in the respective field, for instance windows or doors. Other services, such as assembly and installation of roofs and fences, are provided by regular construction companies, however, these do not focus on the construction of roads and bridges. These services differ clearly in nature and purpose. They are provided by different undertakings, require completely different expertise and have different methods of use. Their trade channels are different and these services are not complementary or in competition. Therefore, they are dissimilar.

The above mentioned remaining contested services in Class 37, namely construction of bridges; road construction; building construction supervision; rental of construction equipment are not similar to any of the opponent's goods in Class 19 either as they do not have the same nature, purpose or methods of use, and are neither complementary nor in competition. Therefore, these contested services in Class 37 are dissimilar to the opponent's goods in Class 19. The same applies obviously to the opponent’s goods in Classes 1 and 17, in particular due to the diverging publics.

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 found to be identical or highly similar are directed at the public at large (for instance, constructions services in Class 37) and at business customers with specific professional knowledge or expertise (for instance, plastic products in the form of profiles in Class 17).

Construction materials, including insulating and sealing materials, must be chosen carefully due to their potential impact on human health, for quality reasons and because of their physical properties which can be crucial for a building. The impact on safety of goods covered by a trade mark may result in an increase in the relevant consumer’s degree of attention (19/09/2009, T-768/15, RP ROYAL PALLADIUM (fig.) / RP, EU:T:2017:630, § 20-28). In addition, while part of the goods and services at issue target the general public as well (such as construction services in Class 37), which is reasonably well informed and reasonably observant and circumspect, the services at issue are specialised services that may have important financial consequences for their users. The same applies to the goods at issue which are all rather expensive. As a consequence, even the general consumers’ level of attention would be quite high when choosing them.

c) The signs

 

VEKA
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In their arguments the parties mention possible meanings of the terms ‘VETA’ and ‘pier’ of the contested sign to support their respective stances that there is or is not a likelihood of confusion between the signs. The meanings mentioned by the parties concern the French-, Spanish-, Italian- and the Portuguese-speaking public. Furthermore, the term ‘VETA’ may also be perceived as meaningful by parts of the public, for example by the Spanish public.

However in this case, the Opposition Division will first examine the opposition in relation to the part of the public for which it is clear that neither of the signs contains a meaningful element, such as the German-speaking public.

For this part of the public, the verbal elements of the signs are meaningless and distinctive to a normal degree.

The earlier mark is a word mark. The contested sign is a figurative mark which contains the verbal elements ‘VETA’ and ‘caro’. The element ‘VETA’ is represented in white bold capital letters with a narrow white stripe above the letter ‘E’. The element ‘caro’ is next following the element ‘VETA’. It is depicted in medium dark orange colour and lowercase, italics letters. These verbal elements are depicted on a dark brown rectangular background which contains a white shape similar to a trapezoid in the upper right corner.

The verbal element ‘caro’ of the contested sign is depicted in a darker tone of orange colour resembling the brown colour of the background. It is therefore much less noticeable than the verbal element ‘VEKA’ which is depicted in white letters on the dark brown rectangular.

The rectangular background is a mundane geometric element which appears in thousands of commercial signs. Its colouring, a reddish brown hue, is common, too. The same applies to the white right-angled trapezoid in the upper right corner, which may stand out more due to its colour but is a completely mundane geometric element, too. The public is used to perceiving such depictions as ornamentation, and rectangular backgrounds are simple geometrical shapes that are commonly used in trade to highlight the information contained within (15/12/2009, T 476/08, Best Buy, EU:T:2009:508, § 27). Consequently, these elements lack any distinctiveness. Taking the aforementioned into account, the element ‘VETA’ in the contested sign is the dominant element as it is the most eye-catching.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Furthermore, 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 earlier mark ‘VEKA’ and the clearly dominant and initial element of the contested sign ‘VETA’ are the same length and differ in only one intermediate letter ‘G’ versus ‘T’, whereas they coincide in their initial letters ‘VE’ and their final letter ‘A’. Furthermore, they differ in the verbal element ‘caro’. However, the latter has less impact on the relevant consumers’ impression, due to its secondary position and because it is depicted in orange colour placed on a similar brown background, which makes this element less legible, and the consumers will not focus their attention on it. Moreover, the signs differ in the figurative background element of the contested mark, which, however, lacks any distinctiveness and will thus not have any impact on the public.

 

Therefore, the signs are  visually similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VE-A’, present identically in both signs in the same positions . The pronunciation differs  in the sound of the letters ‛K’ of the earlier mark and ‘T’ of the of the contested mark respectively. Furthermore, the signs differ in the sound of the term ‘caro’ which has no counterpart in the earlier mark but is in a secondary position.

Contrary to what the applicant alleges, the small stripe on the letter ‘E’ in ‘VETA’ does not distinguish the signs aurally. Part of the public under scrutiny might not even notice this element as it is very small. The other part who will notice it is unlikely to recognize it as an ‘accent ‘aigu’ given that the line is depicted flat on the ‘E’ and thus so different to how this accent is written that it is doubtful that even a French public would recognize it as such, and much less a non-French-speaking public.

 

Therefore, the signs are aurally similar to an average degree.

 

Conceptually, neither of the signs as a whole has a meaning for the public in the relevant territory, which is under scrutiny. 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.

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 claims to be one of the key players in the global PVC window profile market and that, due to this, the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

On 22/01/2020 the opponent filed , in particular, the following evidence:

 

 Extract from the annual financial statement issued by the VEKA group and the opponent (VEKA AG) for the year 2017 containing the opponent’s annual turnover for 2017 and market share figures (Exhibits 21 and 22). It shows that the VEKA AG group of companies achieved a turnover of slightly over one billion EUR and net sales of 929.9 million EUR in the financial year of 2017. VEKA AG alone contributed 369.7 million EUR of this turnover. Germany alone accounted for a turnover volume of EUR 149.4 million. According to the statement, the opponent employs over 5.500 employees as of 2017.

 Extract from http://thestocknewsnow.com (now: https://stockapps.com/), an online financial news and information portal, which features an article discussing a report on the global PVC window market profile (Exhibit 23). It mentions the opponent as one of the key players of the PVC window profile market. The report itself was not submitted. The extract is dated 17/10/2018.

 Extract from www.ebay.de (Exhibit O 18), dated 18/11/2019, showing VEKA window sealing profiles on sale online.

 Extract from www.amazon.de (Exhibit O 19) , dated 18/11/2019, showing VEKA window profiles on sale online.

 Extract from www.eisenwaren.dq-pp.de (Exhibit O 20), dated 18/11/2019, showing VEKA window and door sealing profiles on sale online.

 Extracts from a catalogue of Reckendrees, titled ‘Kunststoff-Fenster SafeHome’ (Exhibit O 24) showing plastic window profiles. The site explains that these are manufactured by the opponent and provides the reader with technical information on such profiles. It is mentioned that the opponent is a worldwide market leader for window profile systems. The extract is dated 17/10/2018.

 Extract from www.kaeuferportal.de (Exhibit O 25). It mentions that the opponent is a renowned and leading manufacturer of window profiles. It also mentions that the opponent is one of the biggest manufacturers on the market. The extract is dated 17/10/2018.

 Extract from www.fenster24.de (Exhibit O 26) showing plastic window profiles and mentioning the opponent as one of the leading manufacturers among other manufacturers. The extract is dated 12/10/2018.

 Extract from www.haustueren-uwe-kuhn.de (Exhibit O 27), which mentions that the opponent is known for high quality window profile systems since 1969 and is one of the leading companies in this area. The extract is dated 17/10/2018.

 Extract from www.hs-fenster.com (Exhibit O 28). It refers to the opponent as world market leader for window profile systems of the highest quality standard which is known for decades. The extract is dated 17/10/2018.

 Extract from www.tuerenfensterland.de (Exhibit O 29) mentioning the opponent as manufacturer of window profile systems of the highest quality. The extract is dated 17/10/2018.

 Extract from www.fenster-herrmann.de (Exhibit O 30) mentioning the opponent as manufacturer of window profile systems of the highest quality. The extract is dated 17/10/2018.

 Around 20 articles from the regional daily newspaper ‘Westfälische Nachrichten’ appearing in Germany (Exhibits O 32 to O 39 and O 44 to O 57). The articles cover a time period from the 1980s through the 1990s up to 2017. They cover news stories relating to the opponent’ business, the development of its company and the family owning the company; some of the extracts show advertisements for job openings at the opponent’s, among others from the 1980s. Both the opponent’s earlier figurative marks, invoked as basis of this opposition, and the verbal sign ‘VEKA’ are used in these articles and ads. Among others, one article mentions that the opponent’s annual turnover was 680 million Deutsche mark (340 million EUR) in 1993 coming from plastics production. Another extract shows that in 1997, the opponent achieved sales of DM 859 million Deutschmark (430 million EUR) in sales of plastic window profile systems with subsidiaries in Europe, the US and Asia.

 Excerpts from the internet archive ‘Wayback Machine’, dated 17/10/2018, showing hits of the opponent’s website www.veka.de from 1998 and 2008 (Exhibits O 40 and O 41). The excerpts refer to the development, production and sale of PVG systems for windows, doors and shutters.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market. It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and, as a result, the mark has achieved a consolidated position in the market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, at least among the professional public which makes up the opponent’s clientele, as explained further above. Therefore, it is considered that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market in relation to the relevant examined goods, namely plastic products in the form of profiles in Class 7.

For the sake of completeness, it is mentioned that the evidence mainly relates to Germany. It is sufficient if the reputation, and mutatis mutandis, the enhanced distinctiveness, exists in a substantial part of the European Union (14/09/1999, C 375/97, Chevy, EU:C:1999:408, § 28; 06/10/2009, C301/07, Pago, EU:C:2009:611, § 30); therefore, high distinctiveness proven in Germany is sufficient to assume high distinctiveness in the whole of the EU (considering that in the ‘Chevy’ and ‘Pago’ judgments the territories of the Benelux and Austria were considered to be sufficient).

It must be emphasised that the evidence refers only to a very specific product (plastic products in the form of profiles) and that any enhanced distinctiveness for these specific goods cannot be taken into account in the assessment of likelihood of confusion in relation to contested goods and services which are manifestly not similar to these goods, such as the services in Class 37, but have been found identical of similar to other goods and services of the opponent.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se in relation to the remaining goods and services. In the present case, the earlier trade mark as a whole has no meaning related with the goods and services in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier mark in relation to the remaining goods must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods and services are partly identical, partly highly similar and partly dissimilar. The degree of attention of the relevant public is high. The signs are visually and aurally similar to an average degree. The conceptual comparison has no influence on the assessment of likelihood of confusion.

Furthermore, as mentioned above, it was found that the earlier mark has acquired a high degree of distinctiveness through its use on the market in relation to plastic products in the form of profiles and therefore enjoys a broader protection with regard to the goods which were found similar to plastic products in the form of profiles, namely synthetic resin, semi-processed. With regard to the other goods and services the earlier mark enjoys an average degree of distinctiveness.

In the present case, it is considered that the circumstances of the case are such that the differences between the signs are insufficient to neutralise the visual and aural similarities. This difference of one letter only in between ‘VEKA’ and ‘VETA’ is not strong, because it appears within the words, disguised by the surrounding letters that are identical in both marks. Moreover, the signs’ differences are mainly to be found in non-distinctive elements (the rectangular figurative element) or secondary elements (the verbal element ‘caro’) which do not have the same impact as the similarities. In addition, the specific depiction of the element ‘caro’ in the contested sign will make customers think that this term is ancillary to the term ‘VETA’ in the sense that it is the specific trade mark for a subrange of products whereas the coinciding element ‘VETA’ refers to the applicant’s house mark.

Given the clear similarities between the earlier mark ‘VEKA’ and this element ‘VETA’ of the contested sign, even consumers with a high degree of attention may believe that the identical and highly similar goods and services at issue proceed from the same or from economically linked undertakings. This applies not only to the goods held highly similar to the goods for which the earlier mark under scrutiny enjoys enhanced distinctiveness and thus an increased scope of protection but also to the contested goods and services found identical or highly similar to goods and services for which the earlier mark does not enjoy enhanced protection.

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.

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).

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

The relevant public could reasonably believe that the identical or highly similar goods bearing the contested sign come from the same or economically linked undertaking since the earlier mark is almost identically included in the contested sign, and at its beginning where it catches the attention of consumers first, as already mentioned above.

Considering all the above, there is a likelihood of confusion (including likelihood of association) for part of the public, such as the German-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 4 689 361 ‘VEKA’. It follows that the contested trade mark must be rejected for the goods and services found to be identical or highly similar to those of the earlier trade mark.

The rest of the contested goods and services, namely monuments, not of metal and buildings, not of metal in Class 19 as well as the contested construction of bridges; road construction building construction supervision; rental of construction equipment in Class 37 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 and services cannot be successful, and that no matter which public is taken into account.

The opponent has also based its opposition on the following earlier trade marks:

 European Trade Mark registration No 4 690 483, (figurative mark) covering the following goods and services:

o Class 1: Plastic mixtures.

o Class 17: Plastic products in the form of profiles, shaped seals for the aforesaid products, shaped parts (semi-finished goods), plates.

o Class 19: Building materials, windows, roller blinds and doors of plastic, plastic window systems, plastic door systems and plastic roller blind systems, folding shutters, roofs, covers and wall coverings of plastic, profiles, seals and plates of plastic, all the aforesaid goods for building; fences, railings, balustrades, floorboards and partitions of plastic, and connectors and fittings therefor, included in class 19.

o Class 37: Assembly and installation of windows, doors, roller blinds, folding shutters, roofs, fences, covers and wall coverings for building; providing information material and support for the aforesaid activities, and for the processing of plastic plates for building.

 European Trade Mark registration No 14 970 123, (figurative mark) covering the following goods:

o Class 17: Plastic products in the form of profiles, shaped seals for the aforesaid products, shaped parts (semi-finished goods), plates.

o Class 19: Building materials, windows, roller blinds and doors of plastic, plastic window systems, plastic door systems and plastic roller blind systems, folding shutters, roofs, covers and wall coverings of plastic, profiles, seals and plates of plastic, all the aforesaid goods for building; Fences, railings, balustrades, floorboards and partitions of plastic, and connectors and fittings therefor, included in class 19.

These other earlier rights cover the same or a narrower scope of goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

 

The opponent invokes Article 8(4) EUTMR in relation with the company name ‘VEKA’ used in the course of trade in Germany.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

 

(a)   rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

 

(b)   that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

 

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

 

 

a) Prior use in the course of trade of more than mere local significance

 

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

 

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

 

In the present case, the contested trade mark was filed on 21/03/2019. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the European Union prior to that date in relation to the field of business indicated in the notice of opposition:

Window systems, in particular windows and window profiles of plastic; door systems, in particular doors, door profiles and door panels of plastic; roller shutter systems; sheet systems, in particular plastic sheets

Production and distribution of window systems, in particular window profiles of plastic; production and distribution of door systems, in particular door panels of plastic; production and distribution of roller shutter systems; production and distribution of sheet systems, in particular plastic sheets; distribution of windows and doors via third parties.

 

b) The right under the applicable law

According to the opponent, the sign ‘VEKA’ is protected as a company name under Section 5, paragraphs 1 and 2 of the German Trade Mark law (hereinafter ‘MarkenG’), stating that the exclusive right itself is protected by Section 15 (2) MarkenG.

A company name is the official designation of an incorporated undertaking, in most cases registered in the respective national commercial register. If, under national law, registration is a prerequisite for protection, registration must be proven. Company names are generally protected against subsequent marks according to the same or similar criteria that are applicable to conflicts between registered marks.

Section 15 of the German Trade Mark Law (hereinafter ‘MarkenG’) determines that there must be a likelihood of confusion between the contested mark and the earlier company name.

Pursuant to established German case-law, the interdependence of the following factors needs to be taken into account for the assessment of a likelihood of confusion between a trade mark and a company name by the relevant public: the ‘vicinity’ or ‘proximity’ of the economic sectors, the similarity of the opposing sign and the distinctive character of the earlier company name. Assessing the risk of confusion under §15(2) of the German Trade Mark Act is very close to the assessment of a likelihood of confusion under Art. 8(1)(b) EUTMR. The criteria of the similarity of goods and services is replaced, however, by that of the proximity of the business sectors for which the signs are used.

The opponent claims that the requirements under section 15 (2) MarkenG (right of prohibition on the basis of a likelihood of confusion) are met in the present case. Consequently, the opponent must show that the company name ‘VEKA’ enjoys protection and that the conditions set by the law governing the earlier sign, here the German trade mark law, are met vis-à-vis the contested trade mark.

On 22/01/2020 the opponent filed the evidence, which was already analysed further above in section d).

 

As mentioned above, the analysis of the above listed evidence shows that the same relates exclusively to the production and distribution of window systems, in particular window profiles of plastic, while there is no evidence that the opponent has provided any of the remaining goods or services on which the opposition is based in the relevant territory. The opponent itself explicitly states in its submissions of 10/09/2020 that its ‘core business’ is ‘the manufacture of plastic profile systems for windows, doors and roller shutters, i. e. of semi-finished plastic products for the manufacture of windows doors and roller shutters’ (underlining by the Opposition Division). Furthermore, it points out that it is not specialised in the ‘manufacture of PVC windows’. This makes clear that the opponent itself seems to assume that the evidence which it submitted refers exclusively to the semi-finished plastic products in the form of profiles which are the goods protected in Class 17 of the opponent’s earlier marks.

However, as was shown in section a) above, all of the opponent’s goods in Class 17, namely plastic products in the form of profiles, shaped seals for the aforesaid products, shaped parts (semi-finished goods), plates are dissimilar to all of the remaining contested goods in Class 19, namely monuments, not of metal and buildings, not of metal as well as to the contested services construction of bridges; road construction; building construction supervision; rental of construction equipment in Class 37.

In the present case, even when applying the ‘proximity of business sectors’ criterion, the goods which have been found dissimilar would still be considered as such. The opponent has not provided any arguments or evidence showing that the contested services that have already been found dissimilar have any business proximity to the opponent’s services.

In its statement of grounds the opponent argued that ‘insofar as the field of business associated with the goods and services covered by the opposed trade mark is concerned, the conflicting fields of business are identical. Both, said goods and services claimed by the opposed trade mark, and the goods and activities for which the opponent’s company name claims protection, fall within the same field of business, namely the field of construction’.

However, the contested monuments, not of metal and buildings, not of metal in Class 19 as well as the contested construction of bridges; road construction; building construction supervision; rental of construction equipment in Class 37 and the opponent’s business sector do not both belong to the ‘field of construction’. As mentioned, according to the opponent’s submission and the evidence, the opponent specialises in the manufacture of semi-finished plastic products for the manufacture of windows doors and roller shutters. In the widest possible sense the opponent’s field of activity could to be defined as the production and distribution of semi-finished plastic products. Thus the opponent belongs to the plastics industry and not the construction industry. The business field in which the manufacturers of buildings and monuments, and construction companies in general as well as those specialising in roads and bridges, are active is quite distinct from this field of activity. The fact that the products resulting from a combination of materials and the opponent’s semi-finished plastic products (for instance, windows) are built into building at a later stage is not sufficient to create a proximity of business sectors in the sense of section 15 (2) MarkenG.

It is in fact difficult to find any similarity to the opponent’s field of business and the contested dissimilar goods and services, which are provided by artists (monuments), specialist architects (building construction supervision) or specialised construction companies (construction of bridges; road construction). These are totally different providers which have different specialisations. And obviously the mere fact that the goods are manufactured by specialised businesses does not render these sectors close in the sense required under German trade mark law either.

Consequently, the requirements of section 15 (2) MarkenG are not met.

For the sake of completeness, the Opposition Division points out that in its statement of grounds the opponent referred to section 15 (2) MarkenG exclusively (page 30 of its statement of grounds, at point ‘b. Contravention against Sec. 15 (2) German Trade Mark Act’) and not to section 15 (3) MarkenG. It merely referred to that section on page 18 of its observations dated 22/01/2020 but reproducing the law’s text does not qualify as a substantiation relating to section 15 (3) MarkenG. In this context, it must be recalled that, according to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought. Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and, equally important, providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM […] with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right’ (05/07/2011, C 263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The opponent has not explained how and to what extent the conditions set out in Art. 15(3) MarkenG apply to the case at hand. Thus, section 15(3) MarkenG cannot be assessed in the present case.

As a consequence, the evidence furnished by the opponent, as regards both the earlier sign’s use and the requirements of the national law, does not have to be assessed further in order to determine whether it is sufficient to prove that that the sign on which the opposition is based was used in the course of trade of more than local significance in the European Union prior to that date or whether any other requirements of Article 8(4) EUTMR are met.

b) Conclusion

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition is not well founded under Article 8(4) EUTMR.

FINAL CONCLUSION

The opposition is upheld under Article 8(1)(b) EUTMR for all the contested goods and services except for monuments, not of metal and buildings, not of metal in Class 19 as well as the construction of bridges; road construction; building construction supervision; rental of construction equipment in Class 37. It also fails under Article 8(4) EUTMR for those remaining goods and services.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

The Opposition Division

 

 

Catherine MEDINA

Christian STEUDTNER

Holger KUNZ

 

 

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.