OPPOSITION Nо B 3 106 369

Azulejos Benadresa, S.A., Carretera Pobla Tornesa-Vall d’Alba Km 4, 12192 Villafamés, Spain (opponent), represented by Neymar Abogados, S.L.P., Plaza de la Paz nº 6‑12 Castellon, 12001 Castellon, Spain (professional representative)

a g a i n s t

Bayker Italia S.p.A., Via Ghiarola Nuova 85/87, 41042 Fiorano Modenese (MO), Italy (applicant), represented by Brunacci & Partners S.R.L, Via Scaglia Est, 19-31, 41126 Modena, Italy (professional representative).

On 27/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 369 is upheld for all the contested goods.

2. European Union trade mark application No 18 095 301 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 of European Union trade mark application No 18 095 301 (figurative mark). The opposition is based on Spanish trade mark registration No 3 658 215 (figurative mark). The opponent invoked Article 8(1)(a) and (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

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

Class 19: Non metallic construction materials; rigid non metallic tubes for construction, asphalt, tar and bitumen; transportable non-metallic constructions, non-metallic monuments.

The contested goods are the following:

Class 19: Sandstone for building; stoneware paving blocks and surfacings; stone slabs for building; slabs, not of metal, for building; boards, not of metal, for walls; paving slabs, not of metal; building panels, not of metal; marble; granite; terra cotta; building materials (non-metallic); mosaics for building; floors, not of metal; wall tiles, not of metal, for building; wall tiles, not of metal; tile floorings, not of metal; stone; artificial stone; ceramic tiles; non-metal wainscotting; buildings, not of metal; floor tiles, not of metal; facings, not of metal, for building.

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.

The contested building materials (non-metallic) overlap with the opponent’s non-metallic construction materials. They are therefore considered identical.

The contested stoneware paving blocks and surfacings; stone slabs for building; slabs, not of metal, for building; boards, not of metal, for walls; paving slabs, not of metal; building panels, not of metal; mosaics for building; floors, not of metal; wall tiles, not of metal, for building; wall tiles, not of metal; tile floorings, not of metal; ceramic tiles; non-metal wainscotting; buildings, not of metal; floor tiles, not of metal; facings, not of metal, for building are included in the broad category of the opponent’s non-metallic construction materials. Therefore, they are identical.

The contested sandstone for building; marble; granite; terra cotta; stone; artificial stone are semi-processed and unprocessed materials used in the building industry and are similar to the opponent’s non-metallic construction materials since they have the same purpose: use for construction purposes. Furthermore, they may be produced by the same companies, target the same relevant public and can be sold through the same distribution channels.

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 identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise, such as professionals in the building sector.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods purchased.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Although the contested sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). This is even more likely because ‘XL’ is depicted in bold.

The relevant public will perceive ‘XL’ and ‘AB’ in both signs.

‘XL’ will be understood by the relevant public as ‘a large size’ since this is commonly used and understood throughout the European Union in relation to clothing products (04/10/2001, C‑517/99, Bravo, EU:C:2001:510). However, this meaning of ‘XL’ is not confined to the clothing sector. It is also frequently used to designate the size of a variety of products. Consequently, this element is weak for the relevant goods since it describes the characteristics of the products: large in size (e.g. the floors, not of metal; wall tiles, not of metal, for building or wall tiles, not of metal) or packed and sold in large quantities (e.g. the asphalt, tar and bitumen or the sandstone for building).

The letters ‘AB’, identically present in the same position in both signs, are not related to the relevant goods and are therefore distinctive to an average degree.

The earlier mark’s additional expression ‘LARGE SIZE SURFACES’ will not be understood by the relevant public and is therefore distinctive. However, due to its small size and unremarkable position within the earlier mark, it plays a secondary role in the overall impression of the sign.

The two horizontal lines extending to the left from the top and bottom of the contested sign’s first letter are of a decorative nature and will not lead consumers to perceive any letter other than ‘X’. This feature, and the remaining figurative aspects in both signs, merely serve to embellish the verbal elements of the signs and are consequently of low impact.

Moreover, 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).

The verbal elements ‘XL’ and ‘AB’ in the earlier mark are co-dominant whilst the contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in their verbal elements ‘XL’ and ‘AB’. However, they differ in the additional expression ‘LARGE SIZE SURFACES’ of the earlier mark, which has no counterpart in the contested sign. They further differ in the figurative aspects of both signs.

Based on the distinctiveness and the weight of all the components of the signs, they are visually and aurally similar to a very high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the same meaning on account of their verbal elements ‘XL’ and ‘AB’, the signs are conceptually identical.

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are partly identical and partly similar and target professionals with a degree of attention that varies from average to high.

The signs are visually and aurally similar to a high degree and conceptually identical. The distinctiveness of the earlier mark is normal.

The verbal elements in both signs are the same, with the only exception being the additional expression ‘LARGE SIZE SURFACES’ in the earlier mark, which is of a secondary nature, as explained in part c) of this decision, and is therefore unlikely to be pronounced by the relevant public.

Indeed, consumers tend to shorten marks that contain several words and only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44).

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 undertaking 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, and taking into account that the differences between the signs are confined to secondary elements and aspects, 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 Spanish trade mark registration No 3 658 215. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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, it 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

Francesca DRAGOSTIN

Sylvie ALBRECHT

Tzvetelina IANTCHEVA

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.