OPPOSITION Nо B 3 115 369

Sc Staer International Sa, Str. Siderurgistilor, bl. SD6B, Galati, Romania (opponent), represented by Loyal Partners Agentie De Proprietate Intelectuala, Parcul de Soft, camera 307, Str. Portulul 23, 800025 Galati, Romania (professional representative)

a g a i n s t

Stiers Gmbh, Industriestraße 5, 85609 Aschheim, Germany (applicant), represented by Michael Voltz, Antonienstraße 1, 80802 Munich, Germany (professional representative).

On 29/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 115 369 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 170 324 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 03/04/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 170 324 ‘STIERS’ (word mark) namely against all the goods and services in Classes 6, 9, 11, 19, 20, 21, 24, 42. The opposition is based on, inter alia, Romanian trade mark registration No 68 433 (figurative mark). The opponent invoked Article 8(1)(b) and Article 8(5) 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 Romanian trade mark registration No 68 433 (figurative mark).

a) The goods and services

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

Class 6: Common metals and their alloys, metal building materials; transportable metal constructions; metallic materials for railways; non-electric metallic cables and wires; metal products and locksmiths; metal tubes, money houses, metal products not included in other classes; ores.

Class 9: Scientific, nautical, geodetic, photographic, cinematographic, optical, weighing, measuring, signaling, controlling (checking), safety (saving) and teaching apparatus and instruments; apparatus and instruments for conducting, distributing, transforming, accumulating, regulating or controlling electric current; apparatus for recording, transmission, reproduction of sounds or images; magnetic recording media, acoustic discs; vending machines and mechanisms for prepaid devices; cash registers, calculating machines, data processing equipment and computers; fire extinguishers.

Class 11: Lighting, heating, steam producing, baking, refrigerating, drying, ventilating, water distribution and plumbing appliances.

Class 19: Non-metallic building materials; non-metallic rigid pipes for construction, asphalt, pitch, bitumen; non-metallic transportable constructions; non-metallic monuments.

Class 20: Furniture, mirrors, copper; products (not included in other classes) of wood, cork, reed, reed, wicker, horn, bone, ivory, whalebone, scales, amber, mother of pearl, sea foam, substitutes for all these materials or plastics.

Class 21: Household or kitchen utensils and containers (neither of precious materials nor coated); combs and sponges; brushes (except brushes); brush material; cleaning material; sponges of metal; raw or semi-processed glass (except construction glass); glassware, porcelain and earthenware, not included in other classes.

Class 24: Fabrics and textile products, not included in other classes; bed and table covers.

Class 35: Advertising; business management; business administration; office work.

Class 42: Scientific and technological services, as well as research and creative services relating thereto; industrial analysis and research services, creation and development of computers and computer programs.

The contested goods and services are the following:

Class 6: Stair treads [steps] of metal; podiums [structures] of metal.

Class 9: Digital projectors; projectors for the entertainment industry.

Class 11: Projector lamps; projector lamps; lighting apparatus; lighting installations; lighting fittings; stage lighting apparatus.

Class 19: Portable stages, not of metal; stair-treads [steps], not of metal; pedestals (non-metallic -) [structures].

Class 20: Ladders and movable steps, non-metallic.

Class 21: Glassware.

Class 24: Curtains.

Class 42: Architectural design for interior decoration.

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 6

The contested stair treads [steps] of metal; podiums [structures] of metal are considered similar to the opponent’s metal building materials, since they have the same nature (being building construction goods) and purpose. Furthermore, they are likely to be produced by the same type of undertakings and could target the same relevant public in the building construction field.

Contested goods in Class 9

The broad category of the opponent’s apparatus for recording, transmission, reproduction of sounds or images encompasses items for sound and image transmission and reproduction, such as the contested digital projectors; projectors for the entertainment industry. These goods have the same nature and purpose, and their method of use may be identical or very similar. Furthermore, these products are sold in the same specialised stores or in the same sections of department stores. Therefore, they are considered, at least, highly similar.

Contested goods in Class 11

The opponent’s lighting appliances and the contested projector lamps; projector lamps; lighting apparatus; lighting installations; lighting fittings; stage lighting apparatus all belong to the same homogeneous market sector of lighting. Therefore, they coincide in a number of relevant criteria, such as their nature, purpose, method of use, complementarity, distribution channels, producers and target public. Therefore, all the contested goods are at least similar to a high degree, if not identical, to the opponent’s lighting appliances.

Contested goods in Class 19

The contested portable stages, not of metal; stair-treads [steps], not of metal; pedestals (non-metallic -) [structures] are finished products. Therefore, they differ in nature from the opponent’s non-metallic building materials. However, the contested goods are used in construction and installed both inside and outside houses and buildings. The goods are all made from non-metallic materials and can target the same public and have the same producers. They can also be interchangeable or in competition and are distributed through the same trade channels. Therefore, they are similar.

Contested goods in Class 20

The contested ladders and movable steps, non-metallic are similar to a low degree to the opponent’s furniture. These goods may have the same purpose, as they are all portable items that are used to prepare a room for living or working, in particular by allowing access to upper areas (ladders, steps). Furthermore, they may have the same relevant public and distribution channels.

Contested goods in Class 21

Glassware is identically contained in both lists of goods (including synonyms).

Contested goods in Class 24

The contested curtains are included in the broad category of, or overlap with, the opponent’s textile products, not included in other classes. Therefore, they are identical.

Contested services in Class 42

The opponent’s scientific and technological services, as well as research and creative services relating thereto are technical services focusing on research and the creation of studies. They are carried out by engineers or technical experts, who elaborate reports and projects following process analysis, and employ a number of techniques. They have the same nature and purpose as the contested architectural design for interior decoration, which may be provided by the same undertakings. Furthermore, they are complementary. Therefore, they are considered similar.

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 found to be identical or similar to varying degrees are directed at both the public at large and 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

	STIERS
Earlier trade mark	Contested sign

The relevant territory is Romania.

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’ verbal elements have no meaning for the relevant public. They are, therefore, distinctive because they do not describe or allude to any of the relevant goods and services’ characteristics.

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).

Visually and aurally, the signs coincide in the letters ‘ST*ER’. However, they differ in their third letters – namely ‘A’ in the earlier mark and ‘I’ in the contested sign – and in the contested mark’s last letter, ‘S’, which has no counterpart in the earlier mark. Visually, the signs also differ in the earlier mark’s blue and white colours. The earlier mark’s typeface is standard and does not constitute a real difference between the signs.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 and services 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks, and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services found to be identical or similar to varying degrees target the public at large and/or business customers. The degree of attention varies from average to high.

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 signs are visually and aurally similar to a high degree. As neither sign has a meaning for the relevant public, the conceptual aspect does not influence the assessment of the signs’ similarity.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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 well founded on the basis of the opponent’s Romanian trade mark registration No 68 433.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

As earlier Romanian trade mark registration No 68 433 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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(5) 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

Richard BIANCHI

Cristina CRESPO MOLTO

Pierluigi M. VILLANI

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.