OPPOSITION Nо B 3 108 350

 

Paschal-Werk G. Maier GmbH, Kreuzbühlstrasse 5, 77790 Steinach, Germany (opponent), represented by Maucher Jenkins, Urachstr. 23, 79102 Freiburg im Breisgau, Germany (professional representative) 

 

a g a i n s t

 

Baukrane Budownictwo Spółka Z Ograniczoną Odpowiedzialnością Spółka Komandytowa, Jana Keplera 36, 80-299 Gdańsk, Poland (applicant), represented by Kancelaria Patentowa Tadeusz Wilczarski, Ul. Norwida 12, 83-110 Tczew, Poland (professional representative).

On 29/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 108 350 is rejected in its entirety.

 

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

 

REASONS

 

On 09/01/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 125 613 ‘BAUSCHAL’ (word mark), namely against all the goods in Classes 6 and 19. The opposition is based on, inter alia, European Union trade mark registration No 17 947 936, ‘PASCHAL’ (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 17 947 936.

 

a) The goods

 

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

 

Class 6: Building and construction materials and elements of metal; structures and transportable buildings of metal; containers, and transportation and packaging articles, of metal; small items of metal hardware, in particular nuts, bolts and fasteners of metal; formwork parts of metal for concrete, in particular formwork boards and panels, formwork tables for slab formwork, formwork corners, compensation parts, connecting bolts, formwork tension rods, spacers of metal, conical stop elements for spacers; spacers being building elements made of metal; shuttering and cladding of metal for use in moulding concrete; scaffolding and scaffolding parts of metal, in particular the aforesaid for application on or of formwork walls, panels and railings for panels in the form of mounts for formwork walkways, formwork supports; profile rails, end rails and crossbeams for overlapping and aligning adjacent formwork panels; girders and beams of metal; building panels of metal; containers, in particular transport containers and containers of metal (storage, transport); panels and pallets of metal; metal frames of metal for building; packaging containers of metal; wall formwork, ceiling formwork and support formwork of metal; work platforms, concreting platforms and support scaffolding of metal.

Class 19: Building and construction materials and elements, not of metal; structures and transportable buildings, not of metal; containers and transport and packaging articles, not of metal; bolts and fasteners, not of metal; formwork parts, not of metal, for concrete, in particular formwork boards and panels, formwork tables for slab formwork, formwork corners, compensation parts, connecting bolts, formwork tension rods, spacers, conical stop elements for spacers; spacers being structural parts, not of metal; scaffolding and scaffolding parts, not of metal, in particular the aforesaid for application on or of formwork walls, panels and railings for panels in the form of mounts for formwork walkways, formwork supports; profile rails, end rails and crossbeams, not of metal, for overlapping and aligning adjacent formwork panels; shuttering and cladding, not of metal, for use in moulding concrete; supports for scaffolding, girders and beams, not of metal; wall formwork, ceiling formwork and support formwork, not of metal; working platforms, concreting platforms and support scaffolding (not of metal); auxiliary construction elements, not of metal, namely formwork, not of metal, for concrete structures; building aids, not of metal, including concrete formwork structures, not of metal. 

The contested goods are the following:

 

Class 6: Metal building materials; refractory construction materials of metal; structures and transportable buildings of metal; materials of metal for building and construction; framework of metal for building; frameworks of metal; shuttering of metal for concrete; system shuttering of metal; shuttering components of metal; ladders and scaffolding, of metal; reinforcing materials of metal for building; containers, and transportation and packaging articles, of metal; fences of metal.

Class 19: Building materials (non-metallic); non-metallic building materials; building and construction materials and elements, not of metal; building sections (non-metallic -); structures and transportable buildings, not of metal; modular building units (non-metallic -); framework for building, not of metal; prefabricated building elements (non-metallic -) for on site assembly; shuttering, not of metal, for concrete; system shuttering, not of metal; shuttering components, not of metal; concrete building materials; fences, not of metal; plastic fences.

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 good in Class 6

 

Structures and transportable buildings of metal; containers, and transportation and packaging articles, of metal are identically contained in both lists of goods (including synonyms).

The contested framework of metal for building; frameworks of metal; ladders and scaffolding, of metal; fences of metal are included in the opponent's broad category of structures and transportable buildings of metal. Therefore, they are identical.

The contested metal building materials; refractory construction materials of metal; shuttering of metal for concrete; reinforcing materials of metal for building; shuttering components of metal; materials of metal for building and construction; system shuttering of metal are included in the opponent's broad category of building and construction materials and elements of metal. Therefore, they are identical.

Contested goods in Class 19

Building and construction materials and elements, not of metal; structures and transportable buildings, not of metal are identically contained in both lists of goods (including synonyms). 

The contested building materials (non-metallic); non-metallic building materials; building sections (non-metallic -); prefabricated building elements (non-metallic -) for on site assembly; shuttering, not of metal, for concrete; concrete building materials; system shuttering, not of metal; shuttering components, not of metal are included in the opponent's broad category of building and construction materials and elements, not of metal. Therefore, they are identical.

The contested modular building units (non-metallic -); framework for building, not of metal; fences, not of metal; plastic fences are included in the opponent's broad category of structures and transportable buildings, not of metal. Therefore, they are identical.

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 at issue are specialised goods directed at business customers with specific professional knowledge or expertise, as well as at the public at large since part of the products can be found in DYI centres and similar stores where building materials are distributed.

 

The degree of attention, due to that specialised nature of the goods in question, is deemed to vary from average to high.

 

c) The signs

 

PASCHAL	BAUSCHAL
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 word mark consists of verbal element ‘PASCHAL’. This element, for the English-speaking part of the public would be understood as an adjective referring to either Easter or the Passover (information extracted from Lexico on 10/06/2021 at https://www.lexico.com/definition/paschal). It would be understood within that context by other members of the relevant public as well as well (ex. French, Polish, Spanish etc.) as it resembles the equivalent word in the relevant territories (ex. pascal, paschał, pascual etc.). Equally, for the Slovak speaking part of the public it would bring to mind the word pascha, which is a reference to Orthodox Easter and the Passover. Furthermore, for the English-speaking public it could be also perceived as a family name. Finally, in certain territories the term as a whole holds no meaning whatsoever (e.g. German-speaking public). Bearing in mind the aforementioned, this element is distinctive for the relevant goods.

The contested word mark consists of the verbal element ‘BAUSCHAL’, which holds no meaning for the relevant public and is thus distinctive for the goods in question.

Visually, the signs coincide in ‘-A*SCHAL’. However, they differ in their beginnings. Namely, they differ in ‘P-’ and ‘B*U-’. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the signs are visually similar to at most an average degree.  

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs differs in the syllable ‘-SCHAL’, present identically in both signs. It differs however in their beginnings, namely in the syllable ‘PA-‘ of the earlier mark and the syllable ‘BAU-‘ of the contested sign. Even assuming that according to the pronunciation rules in certain part of territories where the German language is spoken the letters ‘P’ and ‘B’ would be pronounced in the same way, the difference between the vowels ‘A’ and ‘AU’ are still very distinct and noticeable. This equally applies to the rest of the relevant public, that will pronounce the syllables ‘PA’ and ‘BAU-‘ differently. Therefore, the signs are aurally lowly similar.

 

Conceptually, for the part of the public for which neither of the signs has a meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. For the part of the public for which ‘PASCHAL’ conveys a meaning, the signs are conceptually not similar.

 

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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as a result of its long standing and intensive use in connection with all of the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

 

The opponent submitted as evidence a screen capture of ‘PASCHAL’’s website, on which there is a brief presentation of the opponent’s business activity. More precisely, in this presentation it is stated that the company has ‘more than 50 years of experience’ and ‘belongs to the best-known providers of formwork solutions on a world-wide basis and cooperates with numerous trading partners’. It is further stated that ‘PASCHAL’ is ‘an internationally well-known provider for services, distribution, and production of concrete formwork, formwork technologies, and BIM-capable formwork planning software’. When it comes to the claims of distinctiveness due to longstanding use, the opponent only brings forward ‘the seniority of this trademark back to the year 1965 in many European countries’, in his observations without submitting any further evidence.

   

Having examined the above material, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use. This is because the aforementioned presentation on the introductory page of the opponent’s website constitutes mere statements of the opponent in the framework of online marketing that are not supported by concrete evidence and, thus, have no evidentiary effect. When it comes to the opponent’s seniority claim in the observations, the opponent has not filed any evidence whatsoever, and, thus, this claim has to be considered irrelevant.

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

 

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 stipulated before, the goods in question are identical. The distinctiveness of the earlier mark is deemed to be normal, while the relevant public is the public at large and the professional public and the degree of attention is deemed to vary from average to high. The signs are found to be visually similar to at most an average degree, aurally similar to a low degree and there are no conceptual similarities for a part of the relevant public, whereas for another part a conceptual comparison is not applicable since neither of the signs hold a meaning. The coinciding element ‘-SCHAL’ does not suffice to establish a likelihood of confusion between the marks, since their beginnings convey different aural and visual impressions. What is more, for the part of the public that sees meaning in the earlier mark, the likelihood of confusion is even lower, since one of the two marks conveys a clear concept. In both scenarios, bearing in mind the special weight that is placed by consumers on the beginning of marks, it is deemed that the different elements are clearly perceivable and sufficient to safely exclude a likelihood of confusion including a likelihood of association. Therefore, it can be reasonably concluded that the relevant public will be able to distinguish between the marks and will perceive them as coming from different undertakings.

The opponent refers to a previous national decision to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

 

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

 

The previous decision referred to by the opponent, namely, the decision of the German Federal Patent Court in the matter of "P2" against "B2" (decision dated December 13, 2005, 27 W(pat) 38/03) is not relevant to the present proceedings. While for certain parts of the German-speaking public and according to the local pronunciation rules in parts of this territory the letters ‘P’ and ‘B’ can be pronounced identically, in the present case the differences between the signs do not reside solely in these two letters. More precisely, in the case of the marks ‘PASCHAL/BAUSCHAL’, besides the letters ‘P’ and ‘B’, the aural impression of ‘A’ is clearly distinguishable from that of ‘AU’, for all publics concerned, including the German-speaking one. On the contrary, the cited national case involves two short (two-character) signs, whose only difference resides in their first letter, while the second character is the number ‘2’. It is evident, thus, that a possible identical pronunciation of the letters ‘P and ‘B’ leads to an aural identity of these signs. However, as thoroughly explained above, this cannot be assumed in the present case, where the differences of the signs are more distinct.

  

Considering all the above, even though the goods are identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

   

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

 

 

European Union trade mark registration No 17 947 934,  (figurative mark) and German trade mark registration No 302 010 023 750, ‘PASCHAL Ident’ (word mark).

  

The other earlier rights invoked by the opponent are less similar to the contested mark.  This is because they contain further figurative elements or additional words such as ‘Ident’, which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of goods. 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.

 

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

 

 

Renata COTTRELL

Claudia SCHLIE

Lucinda CARNEY

 

 

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.