OPPOSITION No B 3 086 931

WR-Kundendienst GmbH & Co. KG, Wilhelm-Schickard-Str. 3, 72124 Pliezhausen, Germany (opponent), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Schöttlestr. 8, 70597 Stuttgart, Germany (professional representative)

a g a i n s t

Artur Arutiunov, Ul. V. Vysotskogo 19, Kaliningrad, Kaliningradskaya oblast’ 236 001,

Russian Federation (applicant), represented by Kancelaria Patentowa Tadeusz Wilczarski, ul. Norwida 12, 83-110 Tczew, Poland (professional representative).

On 10/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 931 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 051 908 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 and services of European Union trade mark application No 18 051 908 for the figurative mark . The opposition is based on European Union trade mark registration No 14 105 399 for the word mark ‘TLS’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

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

Class 35: Trading and sale of electronic product presentation systems, sanitary goods, windows, plate glass, window glass, glazings, building materials, construction elements, prefabricated components, solar installations, solar controllers, accumulators, inverters, smart home solutions (specialist home and building technology installations for linking, monitoring, controlling and operating various home and building technology equipment, and for alarm, heating, air conditioning, lighting, window blind, monitoring, ventilating, access control, security and multimedia systems), home security apparatus and locking installations; trading and sale of accessories and spare parts for the aforesaid goods, and for awnings, shading installations, doors and gates, light domes, smoke and heat extraction installations, attic stairs and roof sealants; organisation and providing of customer services in the fields of window and façade technology, glazings, construction elements, sanitary installations, sanitary facilities, awnings, shading installations, doors and gates, light domes, smoke and heat extraction installations, attic stairs, roof sealants, solar installations, smart home solutions (specialist home and building technology installations for linking, monitoring, controlling and operating various home and building technology equipment, and for alarm, heating, air conditioning, lighting, window blind, monitoring, ventilating, access control, security and multimedia systems), home security apparatus and locking installations; providing of information via telephone in the context of call centres, hotlines and emergency services relating to customer services in the fields of window and facade technology, glazings, construction elements, sanitary installations, sanitary facilities, awnings, shading installations, doors and gates, light domes, smoke and heat extraction installations, attic stairs, roof sealants, solar installations, smart home solutions (specialist home and building technology installations for linking, monitoring, controlling and operating various home and building technology equipment, and for alarm, heating, air conditioning, lighting, window blind, monitoring, ventilating, access control, security and multimedia systems), home security apparatus and locking installations; professional business consultancy in the energy management sector; product presentations; management of spare part and accessory warehouses of all kinds.

Class 36: Insurance assessor services.

Class 37: Organisation, arranging and conducting of technical services (including being customer services), namely technical building services, assembly, installation, repair, maintenance, servicing and fitting, including of spare parts and accessories, in the fields of window and façade technology, glazings, construction elements, prefabricated construction parts, sanitary installations, sanitary facilities, awnings, shading installations, doors and gates, light domes, smoke and heat extraction installations, attic stairs, roof sealants, solar installations, solar controllers, accumulators, inverters, smart home solutions (specialist home and building technology installations for linking, monitoring, controlling and operating various home and building technology equipment, and for alarm, heating, air conditioning, lighting, window blind, monitoring, ventilating, access control, security and multimedia systems), home security apparatus and locking installations; assembly for exhibition purposes for trade fairs and sales areas.

Class 39: Shipping of spare parts and accessories.

Class 41: Product training.

Class 42: Consultancy with regard to energy technology in relation to windows and façades; technological consultancy in the field of energy management; expert services, namely for assessing the quality of windows, glazings, façades, construction elements, sanitary installations and sanitary facilities.

The applicant limited the services in Class 37, however, the opponent, after being duly notified, decided to continue with the opposition proceeding. Therefore, the contested goods and services are the following:

Class 17: Packing and stopping material; insulating materials; flexible pipes, not of metal; insulation for building purposes; insulating tiles; insulating matting; injection moulding plastics; materials of plastic in the form of tiles; rubber; gutta-percha; rubber; asbestos; mica; substitutes for all these materials.

Class 19: Non-metallic building materials; building sections (non-metallic -); modular building units (non-metallic -); framework for building, not of metal; prefabricated building elements (non-metallic -) for on site assembly; concrete building materials.

Class 20: Levelling elements, not of metal, for tiles; brackets of (non-metallic -) used for fixing plaques; pegs [pins], not of metal; fasteners of plastic; bundle clips of non-metallic materials; screw threaded fasteners, not of metal; threaded fasteners made of plastic; anchoring devices of (non-metallic -); bolts, not of metal; clips made of plastics; clip clamps, not of metal.

Class 37: Building, construction and demolition; building construction advisory services; building construction consultancy and supervision; laying of floor and wall tiles; construction of floors; screed laying; floor sanding; building insulating; renovation of buildings; installation and repair of electrical, air-conditioning and heating apparatus; building insulating; all aforementioned services not in connection with aviation and aircraft.

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 ‘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 17

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from a consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Therefore, the contested insulating materials; flexible pipes, not of metal; insulation for building purposes; insulating tiles; insulating matting; injection moulding plastics; materials of plastic in the form of tiles are similar to a low degree to the opponent’s trading and sale of building materials in Class 35. The same applies to the contested packing and stopping material as this falls under the general term ‘insulating materials’, which may be used in the construction industry. The purpose of these goods in Class 17 is not for wrapping or packaging, which should have been classified in Class 16, but for insulation purposes. Although the contested rubber (twice in the list); gutta-percha; asbestos; mica; substitutes for all these materials are raw materials, they are similar to building materials as these may be used in their raw form as insulation materials. Consequently, these goods will be distributed through the same distribution channels and they will come from the same commercial source, belonging therefore to the same market sector.

Contested goods in Class 19

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary, and the services are generally offered in the same places as the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested non-metallic building materials; building sections (non-metallic -); modular building units (non-metallic -); framework for building, not of metal; prefabricated building elements (non-metallic -) for on site assembly; concrete building materials, which are building materials, are similar to the opponent’s trading and sale of building materials in Class 35.

Contested goods in Class 20

The contested levelling elements, not of metal, for tiles; brackets of (non-metallic -) used for fixing plaques; pegs [pins], not of metal; fasteners of plastic; bundle clips of non-metallic materials; screw threaded fasteners, not of metal; threaded fasteners made of plastic; anchoring devices of (non-metallic -); bolts, not of metal; clips made of plastics; clip clamps, not of metal are all non-metallic hardware which is widely used in construction, for example in the window and façade technology. Consequently, they are retailed in the same outlets as building materials (which are the goods being the subject matter of the opponent’s retail services) and target the same relevant public. Therefore, they are similar to a low degree, as further argued above, to the opponent’s trading and sale of building materials in Class 35 (08/11/2012, R 2101/2011‑1, VF / VF-PAAL, § 28, 29).

Contested services Class 37

The contested installation and repair of electrical, air-conditioning and heating apparatus; all aforementioned services not in connection with aviation and aircraft overlap with the opponent’s organisation, arranging and conducting of technical services (including being customer services), namely installation, repair in the fields of smart home solutions (specialist home and building technology installations for linking, monitoring, controlling and operating various home and building technology equipment, and for heating, air conditioning). Therefore, they are identical.

The contested building, construction; building construction advisory services; building construction consultancy and supervision; laying of floor and wall tiles; construction of floors; screed laying; floor sanding; building insulating; renovation of buildings; building insulating; all aforementioned services not in connection with aviation and aircraft are at least similar to the opponent’s organisation, arranging and conducting of technical services (including being customer services), namely technical building services, assembly, installation, repair, maintenance, servicing and fitting , including of spare parts and accessories, in the fields of window and façade technology, glazings, construction elements, prefabricated construction parts, sanitary installations, sanitary facilities, awnings, shading installations, doors and gates, light domes, smoke and heat extraction installations, attic stairs, roof sealants, solar installations, solar controllers, accumulators, inverters, smart home solutions (specialist home and building technology installations for linking, monitoring, controlling and operating various home and building technology equipment, and for alarm, heating, air conditioning, lighting, window blind, monitoring, ventilating, access control, security and multimedia systems), home security apparatus and locking installations. The advice, consultation or information services are in principle classified in the same classes as the subject matter of the advice, consequently, there is a similarity between these construction services in a broad sense. Furthermore, the contested services are rendered by the same undertaking as the opponent’s services, which includes technical building services as well as construction elements and prefabricated construction parts. Therefore, the nature, purpose and distribution channels are at least similar.

The contested demolition; all aforementioned services not in connection with aviation and aircraft are similar to the opponent’s organisation, arranging and conducting of technical services (including being customer services), namely technical building services in the fields of construction elements, prefabricated construction parts as they are usually rendered by the same undertaking and target the same relevant public. Furthermore, they are complementary as the demolition services are necessary in some circumstances prior to construction.

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 similar (to varying degrees) are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

c) The signs

TLS
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 signs coincide in their sole verbal elements ‘TLS’, which has no meaning for the relevant public and is, therefore, distinctive to a normal degree. In any case, as the letter sequence is identical in both signs, they both have an equal degree of distinctiveness.

The earlier mark is a word mark composed of a three-letter sequence ‘TLS’.

The contested sign is a figurative mark composed of the verbal element ‘TLS’ in slightly stylised bold black letters, but clearly legible. The stylisation of the letters will be perceived as a graphical means of bringing the verbal elements to the attention of the public and, therefore, its impact on the comparison of the signs will be limited. In front of the letter sequence there is a geometric yellow figure of a large diamond divided into four smaller diamonds. It is a very basic geometric figure and is at most distinctive to a weak degree. The colours used in the contested sign serve a rather decorative purpose and have only a very limited impact on the comparison.

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). Accordingly, it is relevant to note that the main coincidences are found in the verbal elements and, therefore, have a stronger impact.

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

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the letter sequence ‘TLS’ and differ in the slight stylisation, the figurative device and colours of the contested sign. As the earlier mark is entirely included in the contested sign as its only verbal element, which is distinctive, this is not fully offset by the contested sign’s additional elements. Consequently, as these differences have a rather limited impact, the signs are visually similar to a high degree and aurally identical (as the figurative element is not subject to a phonetic assessment).

Conceptually, for the public in the relevant territory neither of the signs has a meaning. Since the figurative element of the contested sign is banal, decorative and at most distinctive to a weak degree, it will not be able to clearly evoke any origin identifying concepts in the minds of the consumers. Consequently, 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 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 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.

e) Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical and partly similar (to varying degrees). They target the general public as well as professionals whose degree of attention may vary from average to high. Furthermore, the earlier sign has a normal degree of distinctiveness. The signs are visually similar to a high degree, aurally identical and conceptually neutral. The signs coincide in a three-letter sequence, as the entire earlier mark is included in the contested sign.

The differences between the signs are the stylisation and the figurative element, which has a weak degree of distinctiveness. These differences are not sufficient to avoid 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). As the earlier mark is entirely included in the contested sign, the relevant public even with a high degree of attention, will consider that it is the stylised or modern version of the earlier mark, maybe used for a different, more hyped line of production.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). As the verbal element of both signs is identical and the differences, as mentioned above, are not sufficient to safeguard the relevant consumers from a likelihood of confusion, the opposition is successful with regard to all the goods and services found to be identical and similar, even if only to a low degree.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 105 399 for the word mark ‘TLS’. It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicant is the losing party, he 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

Marta Maria CHYLIŃSKA

Astrid Victoria WÄBER

Beatrix STELTER

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.