OPPOSITION No B 3 096 646

Válvulas Arco, S.L., Avenida del Cid, 8, 46134 Foyos (Valencia), Spain (opponent), represented by S. Orlando Asesores Legales y en Propiedad Industrial, S.L., C/ Castelló, 20, 4ºD, 28001 Madrid, Spain (professional representative)

a g a i n s t

ARKA Sp z o.o. Sp. K., Ogrodowa 5, 76004 Sianów, Poland (applicant), represented by Kancelaria Patentowa Aneta Balwierz-Michalska, Kard. Wyszyńskiego 3/5, 75‑062 Koszalin, Poland (professional representative).

On 15/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 646 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 082 102 (figurative mark), namely against some of the goods in Classes 6, 11 and 17. The opposition is based on European Union trade mark registration No 9 808 049 (figurative mark). The opponent invoked Article 8(1)(b) and Article 8(3) EUTMR within the relevant opposition period.

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

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

Class 6: Valves of metal for water pipes; manually operated metal valves.

Class 7: Valves for machinery of all kinds.

Class 9: Manometers and electronic instruments used with valves for fluids.

Class 11: Thermostatic valves; level-regulating valves for tanks; stop valves and supply valves for fluids; filters for drinking water.

Class 20: Water-pipe valves (of plastic).

The contested goods, as specified by the opponent, are the following:

Class 6: Pipes, tubes and fittings therefor, including valves, of metal; drain traps [valves] of metal; radiator valves of metal [other than thermostatic]; regulators [valves] of metal other than parts of machines; manually operated metal valves; valve assemblies of metal [other than parts of machines]; check valves of metal [other than parts of machines]; valves of metal other than parts of machines including those from alloy steel and titanium; water-pipe valves of metal; metal valves for controlling the flow of gases in pipelines; metal valves for controlling the flow of fluids in pipelines; valves of metal, other than parts of machines; flap valves of metal; draw-off valves (metal -) [other than parts of machines].

Class 11: Regulating and safety accessories for gas pipes; regulating and safety accessories for water apparatus; safety accessories for water or gas apparatus and pipes; regulating accessories for water or gas apparatus and pipes; shower valves; ball valves; float valves [ball cocks]; valves for air conditioners; manually-operated plumbing valves; radiator valves; safety valves for water pipes; level control valves; shower mixing valves; taps for pipes and pipelines; mixer taps [faucets]; mixing valves [faucets]; valves [plumbing fittings]; mixing valves [faucets] for basins; taps for the control of water flow; stop valves for regulating gas; safety valves for gas pipes; water control valves; taps for water pipes; radiator valves [thermostatic]; valves as part of radiators; safety valves for water apparatus; mixing valves [faucets] for sinks; level controlling valves in tanks; valves being parts of sprinkler systems; valves being part of sanitary installations; thermostatic valves [parts of heating installations]; ball cocks for toilet tanks; stop valves for regulating water; taps for water supply installations; water regulating valves [regulating accessories]; tub control valves [plumbing fittings]; valves [faucets] being parts for sanitary installations; shower control valves [plumbing fittings]; water control valves for faucets; air valves for steam heating installations; safety valves for gas apparatus; control units [thermostatic valves] for heating installations; water control valves [level controlling] in cisterns; pressure relief valves [safety apparatus] for gas pipes; temperature control valves [parts of water supply installations]; water regulating valves [safety accessories]; mixing valves being part of sanitary installations; temperature sensors [thermostatic valves] for central heating radiators; temperature control valves [parts of central heating installations]; control devices [thermostatic valves] for heating installations; control valves (thermostatic -) for central heating radiators; pressure relief valves [safety apparatus] for water pipes; pressure relief valves [safety apparatus] for water apparatus; apparatus for controlling temperature in central heating radiators [valves]; pressure relief valves [safety apparatus] for gas apparatus; water control valves for water cisterns; temperature limiters [valves] for central heating radiators; heat regulating devices [valves] being parts of heating installations; stop valves being safety apparatus for gas apparatus; temperature control valves [parts of central heating radiators]; mechanisms for controlling fluid level in tanks [valves]; temperature regulators [thermostatic valves] for central heating radiators; stop valves being safety apparatus for water apparatus; temperature responsive control apparatus [thermostatic valves] for central heating radiators; temperature limiters for central heating radiators [thermostatic valves] incorporating expansion rods; temperature limiters for central heating radiators [thermostatic valves] incorporating bi-metallic discs; automatic temperature regulators [valves] for central heating radiators; temperature sensitive switches [thermostatic valves] for central heating radiators; temperature sensing apparatus [thermostatic valves] for central heating radiators; valves (level controlling -) being parts for sanitary installations; steam generating apparatus; regulating and safety accessories for water and gas installations; regulating apparatus for water apparatus; regulatory fittings for water pipes; regulating apparatus for gas installations; regulating apparatus for gas pipes; regulating apparatus for gas apparatus; regulating apparatus being parts for water apparatus; regulating apparatus being parts of gas burners; regulating apparatus being parts for water pipes; regulating apparatus for gas pipe installations; regulating accessories for gas pipes and lines; gas operated apparatus for heating; sanitary water conduit fittings; thermostatic valves; water supply and sanitation equipment; lighting.

Class 17: Seals, sealants and fillers; flexible pipes, tubes, hoses, and fittings therefor, including valves, non-metallic; thermal; non-return valves of rubber; valve packing sets; valves of synthetic rubber; clack valves of rubber; valves of india-rubber or vulcanized fibre; flexible pipes, tubes, hoses and fittings therefor (including valves), and fittings for rigid pipes, all non-metallic; valves of rubber or vulcanized fiber [not including machine elements].

For the sake of completeness, the Office takes note of the two consecutive limitations requested by the applicant, on 24/09/2019 and 03/10/2019, in respect of the goods designated under the contested trade mark application.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods assumed to be identical are specialised goods directed at business customers with specific professional knowledge or expertise, such as specialists in hydraulic works and installations.

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.

c) The signs

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 earlier mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The verbal element ‘arco’ of the earlier mark is meaningful in certain languages of the relevant territory, namely in Italian, Portuguese and Spanish, and it is the equivalent word to the English term ‘arch’ (a structure that is curved at the top and is supported on either side by a pillar, post or wall). Since it has no relation with the relevant goods, it is therefore distinctive. This element has a normal distinctive character also for the remaining part of the relevant public for which it is meaningless. The earlier mark contains a figurative element consisting of a red and blue device, which is distinctive.

The verbal element ‘ARKA’ of the contested sign is likely to be associated, at least by the Italian‑, Portuguese‑ and Spanish‑speaking part of the public, with the word ‘arca’, which is the equivalent word to the English term ‘ark’ (a place or thing offering shelter or protection). Since it has no relation with the relevant goods, it is therefore distinctive. This element has a normal distinctive character also for the remaining part of the relevant public for which it is meaningless. The contested sign contains a figurative element consisting of three parallel red wavy lines, which is distinctive.

The applicant argues that the respective figurative elements are conceptually associated with the respective word elements present in the signs. On the one hand, two connected arcs and the word element ‘arco’ in the earlier mark and, on the other hand, three stylised waves conceptually associated with the word element ‘ARKA’ (in particular with the Biblical Noah’s ark) in the contested sign. However, the Opposition Division considers that these arguments derive from a subjective interpretation, since the graphic aspects of the figurative elements cannot reveal in a definite and clear manner any concept in particular.

Contrary to the opponent’s opinion, the signs have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

The opponent claims that when signs consist of both verbal and figurative components the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. In that regard, contrary to the opponent’s assertions, the Opposition Division would like to recall that the verbal element of a sign does not automatically have a stronger impact that the figurative elements of a composite mark (31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40). Accordingly, each sign has to be evaluated on a case‑by‑case basis. In the present proceedings, the figurative elements present in the signs are placed in the first position and, bearing in mind its particular depiction, colours and size, they will not have a lower impact than the verbal elements. Indeed, all the elements have their relevance within the conflicting signs.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the string of letters ‘AR*’ and differ in the remaining letters, ‘*co’ in the earlier mark and ‘*KA’ in the contested sign. The signs further differ in the figurative elements present at the beginning of the signs, as described above, as well as in the different typeface and stylisations of the letters, namely they are depicted in blue lower‑case letters in the earlier mark and in black upper‑case letters in the contested sign.

Therefore, the signs are visually similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, for most of the public, the pronunciation of the signs coincides in the sound of the letters ‛ARC/K’. However, it cannot be excluded that a part of the public speaking Slavic or Baltic languages will pronounce the letters ‘C’ and ‘K’ differently (i.e. /ts/ and /k/) . The pronunciation differs in the sound of the letters ‛O’ of the earlier mark and ‘A’ of the contested sign. The word elements present in the signs are relatively short (only four letters) and the vowel sequence is ‘O‑A’ versus ‘A-A’.

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

Conceptually, for a part of the public, such as the Italian‑, Portuguese‑ and Spanish‑speaking part of the public, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, namely ‘arch’ versus ‘ark’, the signs are conceptually not similar.

For the remaining part of the relevant public, neither of the signs has a meaning and 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 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the goods are assumed to be identical and they target the professional public with a degree of attention that varies from average to high. The earlier mark has a normal distinctiveness.

The signs are visually similar to a very low degree. Indeed, the signs only coincide in two letters of their relatively short word elements (i.e. a total of four letters), but differ in the remaining two letters, as well as in their respective figurative elements, placed at the beginning of the signs, where the consumer usually focuses first the attention. Furthermore, the different typeface and stylisation of the letters create a different overall impression of the word elements. The signs are aurally similar to at most an average degree. However, being relatively short word elements (‘arco’ and ‘ARKA’), it is considered that the fact that they aurally differ in their final letter/s is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. The signs are either conceptually not similar or the conceptual comparison is not possible, depending on the part of the relevant public, as explained above in section c) of the present decision.

The opponent refers to the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. However, in the present case, an imperfect recollection of the signs can lead only to even less similarity between the signs because of the different elements and aspects of the signs, as explained above.

Taking into account the abovementioned and contrary to the opponent’s observations, the relevant consumers, even when displaying an average degree of attention, will not associate the contested sign with the earlier mark. Market practice shows that whilst brand owners have different variations of their marks for different lines, they still maintain the root of their mark. As already stated, the opponent’s earlier mark is not included in the contested sign.

Even if the signs have some coincidences, they may be identified upon a detailed analysis of the signs side by side, while it is the immediate impression created by them that is relevant for the consumer.

Against this background, and given the differences between the signs in the present case, which create sufficient distance in the overall impression of the signs, the Opposition Division does not find it plausible that the relevant consumer, who, again, will be reasonable observant and circumspect, might believe that the identical goods come from the same undertaking or economically linked undertakings.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected based on Article 8(1)(b) EUTMR.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER — ARTICLE 8(3) EUTMR

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or a representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

 the signs are identical or only differ in elements that do not substantially affect their distinctiveness;

 the goods and services are identical or equivalent in commercial terms;

 the applicant is an agent or a representative of the owner of the earlier mark;

 the application was filed without the consent of the owner of the earlier mark;

 the agent or representative fails to justify its acts.

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR cannot succeed.

a) The signs

As it has been explained above in section c) of the present decision under the ground of Article 8(1)(b) EUTMR, the signs are not identical. Furthermore, it cannot be considered that the signs only differ in elements that do not substantially affect their distinctiveness. In particular, for a part of the public, the conflicting word elements ‘arco’ and ‘ARKA’ will be associated with clearly different concepts. In addition, the differences between these relatively short verbal elements are sufficiently relevant in the overall impression of the signs. Finally, the figurative elements present in the respective signs, even if they do not convey any particular meaning, they have different features and they are distinctive.

As one of the necessary requirements is not met, the opposition must be rejected as not well founded under Article 8(3) EUTMR.

In line with the previous findings, there is no need to examine the documents submitted by the parties in support of their arguments and as regards the former commercial relation between them.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vít MAHELKA

Marta GARCÍA COLLADO

Chantal VAN RIEL

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.