OPPOSITION Nо B 3 099 975

Araik Ayvazian, Saarstrasse 87, 06846 Dessau, Germany (opponent), represented by Quermann • Sturm • Weilnau Patentanwälte Partnerschaft mbB, Unter den Eichen 5, 65195 Wiesbaden, Germany (professional representative)

a g a i n s t

Jinyoung Group Co., Ltd., 45 South Haijing Rd, 4th Floor, Unit 10 Xiamen Area (bonded Harbor Area), (fujian) Pilot Free Trade Zone Fujian, People´s Republic of China (applicant), represented by Intermark Patentes y Marcas, S.L.P. (Also Trading As Lidermark Patentes y Marcas), C/ Obispo Frutos, 1b 2a, 30003 Murcia, Spain (professional representative).

On 21/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 099 975 is partially upheld, namely for the following contested goods:

Class 17: Flexible hoses, not of metal; insulating materials; substances for insulating buildings against moisture.

2. European Union trade mark application No 18 092 409 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 092 409 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 16 938 029 ‘Polysmart’ (word mark). 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.

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 16 938 029.

a) The goods

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

Class 1: Unprocessed plastics, in particular for industrial purposes; unprocessed artificial plastics; unprocessed thermoplastic and thermosetting plastics, in particular in granule and powder form; plastics comprising antibacterial or antimicrobial additives or aggregates; wood flour in the form of filler for manufacturing plastics; detergents having anti-bacterial properties for use in manufacturing processes.

Class 9: Light switches, in particular electric light switches.

Class 11: Taps [faucets]; fittings for sanitary purposes, in particular for bathrooms; fittings for basins.

Class 19: Building construction materials; components, buildings, profiles, mouldings, borders, slabs, boards, cladding, not of metal, for building, consisting of wood, laminate, wood substitutes, plastic; manufactured timber; building timber; components and building materials for insulation; floors, not of metal; wall and ceiling linings, not of metal, for building; floor tiles, floor boards and floor panels, not of metal; floor tiles, floor boards and floor panels of wood, laminate, wood substitutes, plastic; floors, floor tiles, floor boards and floor panels of wood or cork; parquet flooring of wood or cork; non-metallic building facade elements; roof tiles, not of metal, all of the aforesaid goods with antibacterial or antimicrobial properties and/or comprising antibacterial or antimicrobial aggregates or constituents.

Class 20: Furniture; plastic furniture, in particular for outdoor areas; door and window handles, not of metal; door and window handles of plastic; containters, not of metal; containers for storage and transport purposes; containers and plastic trays for packaging foodstuffs; portable boxes of plastic (containers); fitted plastic inserts for use as container liners; container closures of plastic; all of the aforesaid goods with antibacterial or antimicrobial properties and/or comprising antibacterial or antimicrobial aggregates or constituents.

Class 21: Tableware, cookware and containers; containers for household or kitchen use; bins for household refuse; containers for beverages, animal fodder and pets; containers for dentifrices; plastic liners for containers; all of the aforesaid goods with antibacterial or antimicrobial properties and/or comprising antibacterial or antimicrobial aggregates or constituents.

The contested goods are the following:

Class 17: Plastic filaments for 3D printing; synthetic resins, semi-processed; plastic substances, semi-processed; gum, raw or semi-worked; flexible hoses, not of metal; insulating materials; substances for insulating buildings against moisture; synthetic rubber; plastic fibers, other than for textile use; acrylic resins, semi-processed.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

The contested flexible hoses, not of metal; insulating materials; substances for insulating buildings against moisture are highly similar to the opponent´s building construction materials; components and building materials for insulation because they have the same nature and purpose in relation to building and construction.

The contested plastic filaments for 3D printing are thermoplastic materials in the form of filaments, typically rolled up in coils, for use in 3D printing which consists of various processes in which material is joined or solidified under computer control to create a three-dimensional object, with material being added together. These goods are aimed at engineers, designers or hobbyists of 3D printing. The opponent’s goods are unprocessed plastics, wood flour and detergents (Class 1), electric light switches (Class 9), taps and fittings for sanitary (Class 11), building construction materials (Class 19), furniture, door and window handles, containers and container closures (Class 20) and tableware, cookware and containers (Class 21). The contested goods are quite specialised and have different natures and purposes to the opponent´s. The mere fact that their ultimate component may coincide in some cases (plastic), is not sufficient to find them similar. Furthermore, it is not common for the same companies to produce both sets of goods which usually also target a different public and do not share the same distribution channels. Finally, they are not complementary or in competition with each other. Therefore, the contested plastic filaments for 3D printing are dissimilar to all of the opponent´s goods in classes 1, 9, 11, 19, 20 and 21.

The contested synthetic resins, semi-processed; plastic substances, semi-processed; gum, raw or semi-worked; synthetic rubber; plastic fibers, other than for textile use; acrylic resins, semi-processed are semi-processed materials which usually need to be further processed in order to find their industrial application. The mere fact that their ultimate component may coincide in some cases (plastic), or they are used in building constructions, is not sufficient to find them similar to the opponent´s goods. The goods in comparison have different nature and method of use. They are not in competition and usually do not coincide in distribution channels or at least at different sections of larger outlets. They usually target different public and usually also are not produced by the same companies. Therefore, the contested synthetic resins, semi-processed; plastic substances, semi-processed; gum, raw or semi-worked; synthetic rubber; plastic fibers, other than for textile use; acrylic resins, semi-processed are dissimilar to all of the opponent´s goods in classes 1, 9, 11, 19, 20 and 21.

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 found to be highly similar are directed at the public at large (e.g. do it yourself enthusiasts) and at business customers with specific professional knowledge or expertise.

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. The impact on safety of goods covered by a trade mark (e.g. insulating materials) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41).

c) The signs

Polysmart
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 fully in their sole verbal element ‘Polysmart’, which appears to have no meaning as a whole and neither have the parties adduced anything that would allow a different conclusion. Nonetheless, in the event a meaning were to be attributed to this word or possible components, it would be immaterial in the present case since the degree of distinctiveness of the signs' verbal elements is irrelevant as they are the same in both marks and because the only differentiating element of the contested sign, merely reside in the typeface, which is non-distinctive.

It follows that the signs are visually highly similar, aurally identical and conceptually identical, if a meaning were assigned to the common element ‘Polysmart’ or to its possible components, or, if not, the conceptual similarity would not influence this assessment.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

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).

The contested goods are partly highly similar and partly dissimilar. They are directed at public at large and business customers with specific professional knowledge or expertise, whose degree of attention may vary from average to high.

The signs are visually highly similar, aurally identical and if not conceptually identical, the conceptual aspect does not influence the assessment of the similarity of the signs. The similarities lay in their coinciding word, ‘Polysmart’, and the only difference between the signs is in the stylisation of the contested sign, which is merely decorative and non-distinctive. Such differences are insufficient to enable the relevant public to safely distinguish between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 938 029.

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

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

 

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

 European Union trade mark registration No 16 938 011 for the figurative mark for the following goods:

Class 1: Unprocessed plastics, In particular for industrial purposes; Unprocessed artificial plastics; Unprocessed thermoplastic and thermosetting plastics, in particular in granule and powder form; Plastics comprising antibacterial or antimicrobial additives or aggregates; Wood flour in the form of filler for manufacturing plastics; Detergents having anti-bacterial properties for use in manufacturing processes.

Class 9: Light switches, in particular electric light switches.

Class 11: Taps [faucets]; fittings for sanitary purposes, in particular for bathrooms; fittings for basins.

Class 19: Building construction materials; components, buildings, profiles, mouldings, borders, slabs, boards, cladding, not of metal, for building, consisting of wood, laminate, wood substitutes, plastic; manufactured timber; building timber; components and building materials for insulation; floors, not of metal; wall and ceiling linings, not of metal, for building; floor tiles, floor boards and floor panels, not of metal; floor tiles, floor boards and floor panels of wood, laminate, wood substitutes, plastic; floors, floor tiles, floor boards and floor panels of wood or cork; parquet flooring of wood or cork; non-metallic building facade elements; roof tiles, not of metal, all of the aforesaid goods with antibacterial or antimicrobial properties and/or comprising antibacterial or antimicrobial aggregates or constituents.

Class 20: Furniture; plastic furniture, in particular for outdoor areas; door and window handles, not of metal; door and window handles of plastic; containters, not of metal; containers for storage and transport purposes; containers and plastic trays for packaging foodstuffs; portable boxes of plastic (containers); fitted plastic inserts for use as container liners; container closures of plastic; all of the aforesaid goods with antibacterial or antimicrobial properties and/or comprising antibacterial or antimicrobial aggregates or constituents.

Class 21: Tableware, cookware and containers; containers for household or kitchen use; bins for household refuse; containers for beverages, animal fodder and pets; containers for dentifrices; plastic liners for containers; all of the aforesaid goods with antibacterial or antimicrobial properties and/or comprising antibacterial or antimicrobial aggregates or constituents.

The other earlier right invoked by the opponent covers the same scope of goods as the earlier mark analysed above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

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

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

 

The Opposition Division

 

 

Martina GALLE

Claudia SCHLIE

Anna BAKALARZ

 

 

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.