OPPOSITION No B 3 122 019

Bauwerk Parkett AG (Bauwerk Wooden Flooring Corporation), Neudorfstr. 49, 9430 St. Margrethen, Switzerland (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Baumerk Yapi Ve Kimya Sanayi Tic. Ltd. Sti, Dursunköy Mah. Uygur Cad. No: 44 Hadimköy Arnavutköy, Istanbul, Turkey (applicant), represented by Casas Asin, S.L., Av. San Francisco Javier, 9 Edificio Sevilla 2, 8ª Planta, Oficina 7, 41018 Sevilla, Spain (professional representative).

On 27/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 122 019 is partially upheld, namely for the following contested goods:

Class 1: Adhesives used in industry; adhesives for use in the construction industry; adhesives for use in construction; adhesives for the construction industry; chemicals for use in the manufacture of adhesives; chemicals for use in making adhesive substances.

Class 19: Construction materials, not of metal; non-metallic building materials; materials, not of metal, for construction; materials, not of metal, for building and construction; building materials of wood; building and construction materials and elements, not of metal; building materials, not of metal; building materials (non-metallic); construction elements of timber; structural support joists (non-metallic -) for the construction of floors.

2. European Union trade mark application No 18 176 602 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 22/05/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 176 602 (figurative mark), namely against some of the goods in Classes 1 and 19. The opposition is based on European Union trade mark registration No 307 454 ‘bauwerk’ (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.

a) The goods

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

Class 1: Adhesives for the wood industry.

Class 19: Goods of wood, namely parquet flooring and woods for parquet flooring.

The contested goods are the following:

Class 1: Adhesives used in industry; adhesives for use in the construction industry; adhesives for use in construction; adhesives for the construction industry; chemicals for use in the manufacture of adhesives; chemicals for use in making adhesive substances.

Class 19: Non-metallic building materials; non-metallic minerals for building or construction; non-metal drains for use in construction of basement waterproofing system; non-metal cladding for construction and building; materials, not of metal, for construction; materials, not of metal, for building and construction; lime building materials; intumescent construction materials; intumescent building materials; gypsum boards for construction purposes; foundation material (non-metallic -) for use in construction; fireproof seals in the nature of building materials; fiber reinforced plastic construction materials; facade construction components of non-metallic materials; expansion joints of non-metallic materials for use in construction; erosion control sheeting or fabric for construction use; erosion control mats [construction]; erosion control fabric [construction]; construction materials of artificial stone; construction materials of natural stone; construction materials, not of metal; construction elements of plastic; construction elements of timber; concrete building materials; coatings [building materials]; cement mortar for use in construction; building materials of wood; building materials of plastics material; building materials of mineral fibres; building materials of concrete reinforced with plastics and glass fibres; building materials, not of metal; building materials (non-metallic); building materials made of rock fibres; building and construction materials and elements, not of metal; bituminous sheetings for use in building construction; bituminous coverings for use in building construction; bitumen latex emulsions for construction purposes; bitumen for use in road construction; bitumen building materials; plastic panels for use in construction; profiles for building construction (non-metallic -); reinforcing mesh made of textile fibres for construction purposes; road building materials (non-metallic -); road construction materials (non-metallic -); roof construction materials (non-metallic -); sand for use in construction; self-leveling concrete for use in building construction; structural reinforcement (non-metallic -) for construction purposes; structural support joists (non-metallic -) for the construction of floors; waterproof bituminous membranes reinforced with glass fibre; bituminous products in the form of membranes for damp-proofing; bituminous products in the form of membranes for waterproofing; bituminous sealing membranes; damp proof membranes of synthetic plastics materials; roofing membranes; bituminous shingles; bituminous sheet materials; bituminous roof coatings; bituminous products for building; bituminous grouts for roofs; bituminous emulsions; bituminous compositions; bituminous coatings for roofing; bituminous coatings for roofs; liquid plastics surface coatings for protection against moisture [not paints].

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.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 1

The contested adhesives used in industry; adhesives for use in the construction industry; adhesives for use in construction; adhesives for the construction industry are included in the opponent’s broad category of adhesives for the wood industry. Therefore, they are identical.

The contested chemicals for use in the manufacture of adhesives; chemicals for use in making adhesive substances are identical to the opponent’s adhesives for the wood industry to the extent that the latter includes chemicals for use in the manufacture of adhesives to be used in the wood industry and chemicals for use in making adhesive substances for use in the wood industry.

Contested goods in Class 19

The contested construction materials, not of metal; non-metallic building materials; materials, not of metal, for construction; materials, not of metal, for building and construction; building materials of wood; building and construction materials and elements, not of metal; building materials, not of metal; building materials (non-metallic) include as broader categories, or overlap with, the opponent’s goods of wood, namely parquet flooring and woods for parquet flooring. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods. Therefore, they are identical.

The contested construction elements of timber are similar to the opponent’s goods of wood, namely parquet flooring and woods for parquet flooring because they coincide in distribution channels, relevant public and producer.

The contested structural support joists (non-metallic -) for the construction of floors are similar to a low degree to the opponent’s goods of wood, namely parquet flooring and woods for parquet flooring because they coincide in relevant public and producer.

The contested non-metallic minerals for building or construction; non-metal drains for use in construction of basement waterproofing system; non-metal cladding for construction and building; lime building materials; intumescent construction materials; intumescent building materials; gypsum boards for construction purposes; foundation material (non-metallic -) for use in construction; fireproof seals in the nature of building materials; fiber reinforced plastic construction materials; facade construction components of non-metallic materials; expansion joints of non-metallic materials for use in construction; erosion control sheeting or fabric for construction use; erosion control mats [construction]; erosion control fabric [construction]; construction materials of artificial stone; construction materials of natural stone; construction elements of plastic; concrete building materials; coatings [building materials]; cement mortar for use in construction; building materials of plastics material; building materials of mineral fibres; building materials of concrete reinforced with plastics and glass fibres; building materials made of rock fibres; bituminous sheetings for use in building construction; bituminous coverings for use in building construction; bitumen latex emulsions for construction purposes; bitumen for use in road construction; bitumen building materials; plastic panels for use in construction; profiles for building construction (non-metallic -); reinforcing mesh made of textile fibres for construction purposes; road building materials (non-metallic -); road construction materials (non-metallic -); roof construction materials (non-metallic -); sand for use in construction; self-leveling concrete for use in building construction; structural reinforcement (non-metallic -) for construction purposes; waterproof bituminous membranes reinforced with glass fibre; bituminous products in the form of membranes for damp-proofing; bituminous products in the form of membranes for waterproofing; bituminous sealing membranes; damp proof membranes of synthetic plastics materials; roofing membranes; bituminous shingles; bituminous sheet materials; bituminous roof coatings; bituminous products for building; bituminous grouts for roofs; bituminous emulsions; bituminous compositions; bituminous coatings for roofing; bituminous coatings for roofs; liquid plastics surface coatings for protection against moisture [not paints] are dissimilar to the opponent’s goods, which are mainly adhesives, wood floors and parquet. Even if the conflicting goods are all materials specifically used for construction purposes, the construction of buildings is an established industry and the use of these materials is typically segmented into specific specialised trades, such as carpentry, insulation, plumbing and roofing. Therefore, the relevant consumers do not expect the opponent’s adhesive for wood in Class 1 and parquet and wood floors in Class 19 to be manufactured by the same companies as those manufacturing the contested goods, since the production of the goods in question requires different techniques and materials. The goods have different specific purposes and methods of use and are not in competition. Whilst some of the goods may be found in the same retail outlets, they would be in different sections of these outlets. Therefore, they are dissimilar.

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 (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) Distinctiveness of the earlier mark and comparison of the signs

bauwerk
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is the word mark ‘bauwerk’. The contested sign is a figurative mark consisting of the verbal element ‘BAUMERK’ depicted in standard bold blue upper-case letters. The typeface used in the contested sign is not particularly elaborate or sophisticated and it will not draw the consumer’s attention away from the verbal element it embellishes.

The protection of a word mark concerns the word as such providing the depiction does not depart from the usual way of writing (standard rules of capitalisation), as is the case here. Therefore, it is irrelevant, for the purposes of the comparison of the signs, that the earlier mark is written in lower-case letters and the contested sign in upper-case letters.

The earlier mark ‘bauwerk’ is meaningful for the German public and it refers to building; structure, whereas it is meaningless for the remaining part of the public such as the Polish- or Spanish-speaking part of the public. Since the conceptual differences between signs may help to easily differentiate them, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public who does not associate any of the signs with any meaning, such as the Polish- or Spanish-speaking part of the public, for which both ‘bauwerk’ and ‘BAUMERK’ are distinctive to a normal degree. 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.

Visually and aurally, the signs coincide in the letters ‘BAU(*)ERK’ and their pronunciation, which constitutes six out of the seven letters of the signs. The signs differ in their fourth letters ‘W’ of the earlier mark and ‘M’ of the contested sign (including their respective pronunciation), which moreover are visually similar albeit in inverted positions. However, as consumers generally tend to focus on the beginning of a sign when encountering a trade mark, the impact of this difference, coming in the middle part of the signs, is less. 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 and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public under assessment. 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) 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).

The goods are partly identical, partly similar (to varying degrees) and partly dissimilar. The degree of attentiveness of the relevant public varies from average to high. The inherent distinctiveness of the earlier mark is normal. Moreover, the signs are visually and aurally similar to a high degree whereas for the part of the public taken into consideration the signs do not convey any semantic content.

Bearing in mind 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), it is likely that in the present case, consumers will confuse the contested sign ‘BAUMERK’ with the earlier mark ‘bauwerk’ in the context of identical and similar goods. This is particularly so because the difference between the signs lies in a single letter, which moreover is positioned in the middle parts of the signs which have less impact on consumers than their beginnings. Even consumers who display a relatively 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). Consequently, it is likely that consumers will misremember the one letter difference placed in the middle of the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish- and Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (including similar to a low degree) to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marzena MACIAK

María del Carmen COBOS PALOMO

Michal KRUK

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.