OPPOSITION No B 3 107 692

Pinturas Emucril, S.L., Sta. Teresa, 5, 29651, Mijas Costa (Malaga), Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036, Barcelona, Spain (professional representative)

a g a i n s t

SmarttechCoatings GmbH, Auf Mohren 14, 55566, Bad Sobernheim, Germany (applicant), represented by Preusche & Partner Patent- Und Rechtsanwälte mbB, Schlossstrasse 1, 56068, Koblenz, Germany (professional representative).

On 08/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 107 692 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 129 100 for the figurative mark . The opposition is based on Spanish trade mark registration No 3605148 for the figurative 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.

a) The goods and services

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

Class 2: paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.

Class 9: computer programs [downloadable software].

The contested goods and services are the following:

Class 1: Liquid coatings [chemical]; Coating compositions [chemicals], other than paint; Coating compositions for protection against the effects of incrustation; Chemical substances, chemical materials and chemical preparations, and natural elements; Coatings for the renovation of floor coverings [other than paints or oils]; Coatings for weatherproofing [chemicals]; Weatherproofing coatings [chemical, other than paints] for masonry; Sensitized coatings.

Class 2: Coatings; Elastomer waterproof coating preparations [paints]; Heat resistant coatings in the nature of paint; Pigmented coatings used as paints; Paints and washes; Varnishes; Epoxy resins for use in covering floors [coatings]; Floor paints; Floor sealing compounds [paints and oils]; Bactericidal paints; Corrosion resistant coatings containing phenol; Resurfacing materials [coatings] in the nature of paints; Coatings for the finishing of surfaces [paints or oils]; Coatings for forms [paints or oils]; Coatings to protect masonry building walls from water [paints or oils]; Coatings for the finishing masonry [paints or oils]; Clear coatings used as paints; Moisture repellant coatings [paints]; Moisture absorbent coatings in the nature of paints; Industrial coatings in the nature of paint; Materials in the nature of coatings for building purposes [paints]; Organic coatings [paints]; Coatings being inorganic [paints or oils, other than building materials]; Rust preservatives in the nature of a coating; Coatings being intumescent [paints or oils, other than building materials]; Corrosion inhibiting paint type coatings for use in the oil and/or gas drilling industry; Textured coatings [paints]; Transparent coating materials [paints]; Weatherproofing coatings [paints]; Waterproof coatings [paints]; Water repellent coatings [paints] for masonry; Weatherproofing coatings [paints] for concrete; Paints having remedial properties; Paints having flexible properties; Paints for protection against fire; Paints for use in preventing mould; Substances for inhibiting damage from oil [paints]; Exterior paint; Levelling preparations in the nature of paints; Concrete sealing agents [paints]; Chemicalproof paints; Dust proofing chemical preparations [paint]; Roofing compounds [paints]; Elasticated paints for protecting metals against corrosion; Products for sealing brickwork [paints]; Products for sealing concrete [paints]; Products for protecting concrete [paints]; Paint for concrete floors; Fluorescent paints; Liquid plastics surface coatings [paints] for protection against moisture; Protective coatings for application in liquid form for use on metals; Filler materials in the nature of paint; Synthetic resin primers [paints]; Coatings for use as primers; Undercoating for surfaces to be painted; Preparations for priming purposes [paints]; High solids top coats; High solids primers; Industrial paints for use on concrete surfaces; Industrial paints for use on metal; Interior paint; Materials for use in maintaining buildings [paint]; Solvent free painting compositions; Luminous paints; Metallic paints; Materials for use in protecting buildings [paints]; Mixed paints; Surface coatings in the nature of paint for the decoration of structures; Surface coatings in the nature of paint; Surface coating compositions [paints]; Protective surface coatings [paints]; Preparations [paints] containing agents for preventing attack of wood by insects; Preparations [paints] containing agents for preventing attack of wood by fungus; Preparations for use as waterproofing coatings on the surfaces of buildings [paints]; Preparations for use as waterproofing coatings on the surfaces of structures [paints]; Surface treatment materials in the nature of paints; Protective coatings for walkways [paints]; Protective coatings in the nature of paints for building purposes; Protective coatings for buildings [paints]; Protective coatings with sealing qualities for use on concrete [paints]; Protective coatings for application in liquid form for use on concrete [paint]; Substances in the nature of paint for filling cracks in wall surfaces; Sealing compositions in the nature of paint; Sealing preparations for floors [paint]; Wall coatings [paint]; Waterproof coatings [chemical, paints]; Additives for paints.

Class 27: Floor coverings and artificial ground coverings; Wall and ceiling coverings; Artificial ground coverings; Wallcoverings; Non-textile wall hangings; Floor coverings; Protective floor coverings; Plastic wall coverings.

Class 35: Retail services in relation to wall and ceiling coverings; Retail services in relation to floor coverings and artificial ground coverings; Wholesale services in relation to floor coverings and artificial ground coverings; Retail services in relation to resurfacing materials [coatings] in the nature of paints; Retail services in relation to bactericidal paints; Wholesale services in relation to resurfacing materials [coatings] in the nature of paints; Online retail services in relation to resurfacing materials [coatings] in the nature of paints; Retail services in relation to coating compositions [chemicals], other than paint; Wholesale services in relation to coating compositions [chemicals], other than paint; Online retail services in relation to coating compositions [chemicals], other than paint; Wholesale services in relation to bactericidal paints; Online retail services in relation to bactericidal paints.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services 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 and services assumed to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

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 and services purchased.

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).

Both signs are figurative marks, namely a specific representation of word or graphic characteristics or a combination of word and graphic elements, whether or not in colour (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33).

The earlier mark consists of a colorful abstract fanciful device which partially overlap with the words ‘SMART’ and’ Color System’ arranged on two levels.

The contested sign consists of a abstract shape with six faces in different shades of gray and the words ‘SMARTtech’ and ‘COATINGS’ displayed over two lines. The terms ‘SMART’ and ‘tech’ are separated visually as ‘SMART’ is in dark gray upper cases and ‘tech’ in light gray lower cases and on the top of the letter ‘h’ is displayed a leaf.

When assessing the identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered or applied for 09/04/2014, T-623/11, Milanowek cream fudge, EU:T:2014:199, § 38).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The common word ‘SMART’ is a well-known word. It will be immediately understood as the English word for ‘intelligent’ or ‘clever’. It is internationally known that the term ‘smart’ is used as an indicator of refined products or services, in particular those that use artificial intelligence or have or incorporate a particular technical characteristic or function. In everyday life, consumers are familiar with expressions such as ‘Smartphone’, ‘Smartcard’, ‘Smart TV’, ‘Smart watch’. Therefore, the word ‘smart’ is considered to be non-distinctive for the goods and services in question on the ground that it refers to the intelligent technology or technological sophistication of the relevant goods and of the goods covered by the relevant services.

The English words ‘COLOR SYSTEM’ of the earlier mark will be understood as such as the word ‘COLOR’ exists with the same meaning in Spanish and the word ‘SYSTEM’ is very similar to the equivalent national word ‘sistema’. In this respect, the word ‘system’ refers to 'a way of working, organizing, or doing something which follows a fixed plan or set of rules' or 'a set of equipment or parts. Therefore, the relevant public will perceive the verbal elements ‘COLOR SYSTEM’ as a conceptual unit conveying an informative message that the goods concerned are a set of goods intended for the painting and colouring sector, and thus these words are considered non-distinctive.

The word elements ‘SMART COLOR SYSTEM’ in the earlier mark will be perceived, in its conjunction, as a reference to a set of goods intended for the painting and colouring sector which incorporate or have a particular technical characteristic or function.

Contrary to the opponent’s assertation, the term ‘TECH’ in the contested sign will be readily perceived by the relevant public as referring to ‘technology’ as it is commonly used in the relevant territory and as a reference to the fact that the relevant goods and the goods covered by the relevant services incorporate, or are used as technological solutions. This element is considered to be non-distinctive. Therefore, the combination ‘SMARTTECH’ of the contested sign will convey positive aspects of the products and will be perceived as indicating that the goods were manufactured using innovative technology or by advanced technological means to enhance the quality of their performance.

The English word ‘COATING’ in the contested sign has no meaning for the relevant public. This is not a basic English word and is not commonly used in the relevant territory. Furthermore, its equivalent word in the official language in the relevant territory is very different, ‘rivestimiento’. Therefore, it is considered distinctive.

Both signs include an abstract fanciful device. In any event these figurative elements are distinctive as they do not indicate nor allude to any of the characteristics of the goods and services at issue and are not simple or banal geometric shapes.

The leaf in the contested sign is a decorative nature and will be seen as mere embellishment and will hence have a limited impact on the overall impression of the sign.

It is true that in principle, consumers tend to focus on the first part of a sign when being confronted with a trade mark. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark. Nevertheless, the concept ‘beginning of the sign’ is undetermined, as there is no particular indication of what forms the beginning, what is the end or even if there is or is not a middle part of the sign. Again, this perception mostly depends on the circumstances of the case (length of sign, syllabic distribution, use of typeface, etc.) and not on a set rule. It could even be that a sign is perceived as having a short beginning and ending and a proportionally much larger middle or central part.

Consequently, depending on the circumstances, the rule of the relevance of the beginning of the sign could have less weight.

As mentioned above, the common word ‘SMART’ is non-distinctive in relation to the goods and services concerned; hence the relevant public will pay a minimal attention to this part.

The signs have no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in ‘SMART’ which however is non-distinctive. The signs differ in all the remaining elements, the terms ‘COLOR SYSTEM’ of the earlier mark and ‘TECH’ and ‘COATING’ of the contested sign, visually, they also differ in their figurative elements.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public will identify the word ‘SMART’ in both signs, however, since this element is non-distinctive cannot indicate the commercial origin, the attention of the relevant public will be attracted by the additional elements. Therefore, the signs are conceptually similar only to a very low degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

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 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods and services have been assumed to be identical. They are directed at the public at large and at professionals, whose degree of attention may vary from average to high. The distinctiveness of the earlier mark is low.

The marks are visually, aurally and conceptually similar to a very low degree.

It is important to point out that the marks, as figurative signs, include specific representation must be taken into account in the overall assessment of the similarity between the signs, with the result that such a figurative mark cannot, in principle, be given a scope of protection which is strictly identical to that of a word mark consisting only of its dominant word element (T-13/05/2015, T-608/13, easyAirtours (fig.) / international airtours (fig.) et al., EU:T:2015:282, § 61).

Given the non-distinctiveness of the word ‘SMART’, the combination and arrangement of the various elements in the signs and the presence of additional figurative and verbal elements constitute a sufficient differentiating element to rule out a risk of confusion. The visual differences derived from the figurative aspects and the structure of the signs are clearly perceived, and these differences cannot be underestimated due to the coincidence in the non-distinctive word SMART, whose graphic representation is also very different. All of this endows the signs with a sufficiently different overall image to be able to exclude the risk of confusion between the marks.

Furthermore, it must born in mind that the kind of goods and services in question allow the assumption that the relevant public will not generally purchase them orally, but rather after having seen the signs represented. Therefore, it is considered that the visual differences indicated will be immediately noticed by the consumer, who, as already mentioned, has at least a medium level of attention, allowing him to distinguish the signs clearly.

It follows that even in the event of identical goods and services, it is unlikely that the relevant consumers would confuse the signs, since the principle of interdependence does not come into play in a case where the signs were only found to be similar because their non-distinctive elements coincide, and in particular, when that element plays a limited role within the contested sign which features other distinctive elements, ‘COATINGS’ which is also significant longer that the common term ‘SMART’.

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

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

Aldo BLASI

Francesca CANGERI

Andrea VALISA

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.