OPPOSITION Nо B 3 118 533

 

Bunzl UK Limited, York House 45 Seymour Street, London W1H 7JT, United Kingdom (opponent), represented by Wynne-Jones IP Limited, 2nd Floor, 5210 Valiant Court Gloucester Business Park, Gloucester GL3 4FE, United Kingdom (professional representative) 

 

a g a i n s t

 

Bulcorp Ltd., Kazanlak Str., 1, 7200 Razgrad, Bulgaria (applicant), represented by Mariya Markova, Prof. Dr. Dimitar Atanasov Str. 12, 1680 Sofia, Bulgaria (professional representative).

On 20/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 118 533 is partially upheld, namely for the following contested goods:

 

	Class 19: Building and construction materials and elements, not of metal; Doors, gates, windows and window coverings, not of metal.
2.	European Union trade mark application No 18 209 300 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

 

REASONS

 

On 06/05/2020, the opponent filed an opposition against all of the goods of European Union trade mark application No 18 209 300 . The opposition is based on European Union trade mark registration No 16 238 594 'GUARD VISION' and United Kingdom trade mark registration No 3 179 973 'GUARD VISION'. The opponent invoked Article 8(1)(b) EUTMR. On 13/11/2020 the opponent withdrew the opposition against “Statues and works of art made of materials such as stone, concrete and marble, included in the class” in Class 19.

 

EARLIER UNITED KINGDOM RIGHT

 

On 01/02/2020, the United Kingdom (UK) withdrew from the European Union (EU) subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registration No 3 179 973 no longer constitutes a valid basis of the opposition.

 

The opposition must therefore be rejected as far as it is based on this earlier right.

 

PRELIMINARY NOTE

During the opposition proceedings, on 27/11/2020 the Office has given the applicant an opportunity to present its observations and arguments in reply to the opposition before 08/02/2021. The applicant did not present any observations or arguments within that deadline nor ask for an extension to that extent. On 22/02/2021 the applicant sent in its observations claiming that they have been sent in time, without presenting any proof about that. However, the Opposition Division notes that these observations and arguments cannot be taken into account, as they were not received within the time limit, in accordance with Article 8(2), (3) and (4) EUTMDR. The applicant has been informed about this fact on 09/03/2021 and the Office has not received any further communications from the applicant.

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 6: Metallic barriers, gates and fencing; metallic crash and traffic barrier systems; metallic warning barriers, gates and fencing systems; metallic retractable barriers; metallic verge posts.

Class 9: Traffic cones; Warning lights (beacons) for traffic.

Class 19: Non metallic barriers, gates and fencing; non metallic crash and traffic barrier systems; non metallic warning barriers, gates and fencing systems, non metallic retractable barriers; non-metallic verge posts.

The contested goods are the following:

Class 19: Building and construction materials and elements, not of metal; Doors, gates, windows and window coverings, not of metal; Structures and transportable buildings, not of metal.

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.

The contested Building and construction materials and elements, not of metal include, as a broader category, the opponent’s Non metallic barriers and fencing. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Doors, gates, windows and window coverings, not of metal are at least similar to the opponent’s Non metallic barriers and gates, because these are all construction and building elements that act as a barrier to something. The goods have therefore similar nature and purpose and can coincide in the manufacturer and consumer.

The contested Structures and transportable buildings, not of metal are dissimilar to the opponent’s goods. Their nature and intended purpose are different when compared to all the opponent’s goods. Moreover, the goods in question would normally have different producers. They are neither complementary to nor in competition with each other.

 

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 and similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

The degree of attention ranges from average to above average due to the nature of the goods.

  

c) The signs

 

GUARD VISION
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 a word mark, and the contested mark is a figurative mark, both containing the words VISION and GUARD, but in reverse order. In the contested sign the words are conjoined, but clearly separable due to a use of different shades of green.

The common elements VISION and GUARD are meaningful in certain territories, for example in those countries where English is understood. To take this into account in the comparison, as it has an impact on the conceptual comparison, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element GUARD in both marks is understood by the English speaking public as referring to watch over or shield or an act or person doing that, and the word VISION refers to sight (all from Collins English Dictionary online, www.collinsdictionary.com, extracted on 17/05/2021). Considering the goods, the words in both marks are distinctive.

The earlier sign as a whole might refer to something that will protect vision. While a unitary meaning is possible in English, it is not at all clear or obvious considering the goods. The contested sign refers to something that protects vision, but also in this case the meaning is not at all cleat or obvious considering the goods.

As regards the contested sign, it is composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature, consisting of the use of stylised typeface and different shades of green colour. Therefore, the verbal elements are more distinctive than the figurative elements. The stylisation will merely be perceived as a graphical way of bringing the verbal elements to the public’s attention and, therefore, its impact on the comparison of the sign will be limited.

 

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, the signs coincide in that they both contain the words VISION and GUARD, albeit placed in a reversed order. In the earlier mark these words are written separately, while in the contested sign they are conjoined and written in a stylised green typeface. It is noted that in the case of word marks, such as the earlier sign, it is the word that is protected and not its written form.

 

Therefore, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the sound of all the syllables. The fact that the syllables of the signs will be pronounced in an inverted order cannot prevent the signs from being phonetically similar overall.

Therefore, the signs are aurally to at least a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs feature the same meaningful words, albeit in reverse order, and possibly performing a different grammatical function (depending on how perceived), they are both conceptually highly 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.

 

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 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).

The goods are partly identical, partly at least similar and partly dissimilar and directed at the public at large and professional public with an average degree of attention.

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).

The signs are visually and aurally similar to at least a low degree, due to the coincidence in all their words, despite the inversion of them. Conceptually the signs are highly similar. The distinctiveness of the earlier mark is normal. The differences are limited to the inverted position of the words VISION and GUARD and the contested sign’s stylisation, which are not enough to counterbalance the similarities between the signs.

Each of the signs in question is composed of two identical and clearly identifiable elements as mentioned, since, in the earlier mark, they are separated by a space and, in the mark applied for, they stand out because of the use of the different shades of green colour. Notwithstanding the absence of separation in the mark applied for, the unavoidable conclusion is that the use of those colours allows separation immediately into two distinctive parts, namely ‘VISION’ and ‘GUARD’, which correspond to the elements which make up the earlier mark, used in inverse order. The mere inversion of the elements of a mark cannot allow the conclusion to be drawn that there is no visual or aural similarity (11/06/2009, T-67/08, InvestHedge, EU:T:2009:198, § 35 and 39). For the public under analysis these verbal elements are separated also because each of them conveys a specific meaning as explained above.

The consideration that the consumers pay more attention to the beginning of the mark also cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

In view of the forgoing and taking into account all the relevant circumstances of the case, as well as the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and vice versa, given the identity between some of the goods in question, the Opposition Division concludes that the signs are sufficiently similar to cause a likelihood of confusion on the part of the relevant English-speaking public in the European Union based on the inherent distinctiveness of the earlier mark 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 and at least similar to those of the earlier trade mark.

The rest of the contested goods - structures and transportable buildings, not of metal- 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

 

 

Angela DI BLASIO

Erkki MÜNTER

Gonzalo BILBAO TEJADA

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.