OPPOSITION No B 3 099 827

Schütz GmbH & Co. KGaA, Schützstr. 12, 56242 Selters, Germany (opponent), represented by Advotec. Patent- und Rechtsanwälte, Bahnhofstraße 4, 57072 Siegen, Germany (professional representative)

a g a i n s t

Cemacon S.A., Calea Turzii nr. 178K et. 1, Cluj-Napoca jud. Cluj, Romania (applicant), represented by S.C. Ariana Agentie de Proprietate Industriala S.R.L., Calea Aradului Nr.33 Ap. 7, 300629 Timisoara, Romania (professional representative).

On 11/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 099 827 is upheld for all the contested goods.

2. European Union trade mark application No 18 096 715 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 18 096 715 for the word mark ‘EVOTHERM’. The opposition is based on, inter alia, European Union trade mark registration No 12 956 348 for the word mark ‘EVOTHERM’. 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 12 956 348.

a) The goods

The opposition is based on, inter alia, the following goods:

Class 17: Insulating boards being parts for floor and air heating systems for home and building technology; Junctions, not of metal, for pipes; Mats, panels and foils for heat, radiation and footfall insulation; Heat insulating panels for building purposes.

Class 19: Pipe laying aids, namely pipe support plates, not of metal; Composite pipes and multilayer pipes, not of metal; Extension, branching and connection pipes and parts, not of metal; Drain taps (valves) for lines and pipes; Panel elements of plastic for creating cavity floors for laying supply lines of all kinds and for installing ventilating, heating, refrigerating and air conditioning installations in rooms and halls; Ceiling cooling elements of plastic; none of the aforesaid goods in relation to the production, supply, distribution, application, installation or maintenance of road, path, specialist or other outdoor surfacing goods or services.

The contested goods are the following:

Class 17: Glass fiber insulation materials for use in construction; Soundproofing materials of stone wool [not for building purposes]; Insulators; Insulating materials; Insulating plaster; Insulation sheets; Insulating felt; Insulation for building purposes; Fibreglass for insulation; Mineral wool [insulator]; Lightweight mineral wool slabs for acoustic insulation purposes; Lightweight mineral wool slabs for thermal insulation purposes.

Class 19: Building materials, not of metal; Fiberboard [building materials]; Reinforcing fabrics (Non-metallic -) for building; Building materials made of rock fibres; Facade construction components of non-metallic materials; Stabilisation fabrics [geotextiles] (non-metallic -) for use in construction; Non-woven textiles made of synthetic fibers for use in the building industry.

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 glass fiber insulation materials for use in construction; soundproofing materials of stone wool [not for building purposes]; insulators; insulating materials; insulating plaster; insulation sheets; insulating felt; insulation for building purposes; fibreglass for insulation; mineral wool [insulator]; lightweight mineral wool slabs for acoustic insulation purposes; lightweight mineral wool slabs for thermal insulation purposes and the opponent’s mats, panels and foils for heat, radiation and footfall insulation, if not identical because the contested goods include, or overlap with, the opponent’s goods (e.g. insulating materials and lightweight mineral wool slabs for acoustic insulation purposes), they are all at least similar since they can all at least target the same relevant public, share the same distribution channels and be produced by the same undertakings manufacturing insulating materials.

Contested goods in Class 19

The contested building materials, not of metal; fiberboard [building materials]; reinforcing fabrics (non-metallic -) for building; building materials made of rock fibres; facade construction components of non-metallic materials; stabilisation fabrics [geotextiles] (non-metallic -) for use in construction; non-woven textiles made of synthetic fibers for use in the building industry (which are all non-metal building materials) and the opponent’s extension, branching and connection pipes and parts, not of metal; panel elements of plastic for creating cavity floors for laying supply lines of all kinds and for installing ventilating, heating, refrigerating and air conditioning installations in rooms and halls; ceiling cooling elements of plastic (which are also non-metal building materials), if not identical because the contested goods include the opponent’s goods (e.g. building materials, not of metal), are all at least similar to either one or more of the opponent’s categories of goods since they can at least target the same relevant public, share the same distribution channels and be produced by the same undertakings.

b) The signs

EVOTHERM	EVOTHERM
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

All the contested goods are at least similar to the opponent’s goods and the signs are identical.

Given the identity of the signs and the (at least) similarity between the goods concerned, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must therefore be upheld for all the contested goods.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 956 348. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 12 956 348 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Sam GYLLING

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.