OPPOSITION No B 2 188 079

Polytherm Española, S.A., Avenida de la Fuente Nueva, 12 Edificio B, 28700 San Sebastian de los Reyes (Madrid), Spain (opponent), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)

a g a i n s t

Schüco International KG, Karolinenstr. 1-15, 33609 Bielefeld, Germany (applicant), represented by Loesenbeck · Specht · Dantz, Am Zwinger 2, 33602 Bielefeld, Germany (professional representative).

On 29/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 188 079 is partially upheld, namely for the following contested goods:

Class 17: Packing and insulating materials, seals of plastic, metal, brushes, textiles or of renewable raw materials and combinations thereof, weatherstripping compositions, aforementioned goods not being flexible tubes and pipes or parts or accessories therefor.

Class 19: Building materials (non-metallic) except tubes and pipes, in particular profiles, plates and films for windows, doors and gates, balconies and frames; Windows, doors, gates, staircases, partitions, balconies and conservatories, frames for use in construction; All the aforesaid goods not of metal or only combined with metal, included in class 19.

2. European Union trade mark application No 11 567 112 is rejected for all the above goods. It may proceed for all the non-contested goods in Class 6 and the following goods in Class 17:

Class 17: Plastic in extruded form for use in manufacture, aforementioned goods not being flexible tubes and pipes or parts or accessories therefor.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 567 112, namely against all the goods in Classes 17 and 19. The opposition is based on Spanish trade mark registration No 2 872 263. 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.

1. The goods

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

Class 17: Flexible tubes and pipes non-metallic, and parts and accessories of the aforementioned goods included in this class.

Class 19: Rigid tubes and pipes non-metallic, and parts and accessories of the aforementioned goods included in this class.

The contested goods are the following (after the applicant’s limitation):

Class 17: Packing and insulating materials, seals of plastic, metal, brushes, textiles or of renewable raw materials and combinations thereof, weatherstripping compositions, plastic in extruded form for use in manufacture, aforementioned goods not being flexible tubes and pipes or parts or accessories therefor.

Class 19: Building materials (non-metallic) except tubes and pipes, in particular profiles, plates and films for windows, doors and gates, balconies and frames; Windows, doors, gates, staircases, partitions, balconies and conservatories, frames for use in construction; All the aforesaid goods not of metal or only combined with metal, included in class 19.

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

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 17

The contested packing and insulating materials, seals of plastic, metal, brushes, textiles or of renewable raw materials and combinations thereof are various kinds of substances, materials or items used as a barrier to prevent the passage of air, water, gas, fire, etc. The contested weatherstripping compositions are sealing materials used to protect against rain and wind. On the other hand, the opponent’s flexible tubes and pipes non-metallic, and parts and accessories of the aforementioned goods included in this class are hollow cylindrical objects used for example to convey liquids or gases or as a protective conduit through which e.g. wires can be pulled, and parts and accessories thereof. The goods compared are all used for construction purposes although their specific purpose of use differs. Moreover, they can have the same producer, distribution channels and relevant public. Consequently, they are similar.

The applicant’s limitation ‘aforementioned goods not being flexible tubes and pipes or parts or accessories therefor’ excludes only goods which are identical to the opponent’s goods but does not prevent a finding that other goods could be similar to the opponent’s goods. Consequently, this limitation is not a bar for the finding of similarity.

The contested plastic in extruded form for use in manufacture is a raw or semi-processed material that is used for further manufacturing of plastic products. Although the opponent’s goods can be made of plastic, their nature and purpose of use is very different because the contested goods are raw or semi-processed materials for use in further manufacturing whereas the opponent’s goods are final products used for example to convey liquids or gases. Moreover, the degree of transformation of the raw or semi-finished material (plastic in extruded form) in the opponent’s final products, namely tubes and pipes and parts and accessories thereof, is high. The relevant public is quite different because the contested goods target factories producing various plastic goods whereas the opponent’s goods target construction or installation companies by way of an example. The method of use of the goods is very different and they cannot be considered to be in competition or complementary. On the whole, the contested plastic in extruded form for use in manufacture is considered dissimilar to all the opponent’s goods in Classes 17 and 19.

Contested goods in Class 19

The contested building materials (non-metallic) except tubes and pipes, in particular profiles, plates and films for windows, doors and gates, balconies and frames; Windows, doors, gates, staircases, partitions, balconies and conservatories, frames for use in construction; all the aforesaid goods not of metal or only combined with metal, included in class 19 are various types of goods used in building and construction. The opponent’s goods in Classes 17 and 19 are tubes and pipes also used in building and construction. Consequently, the goods coincide in their general purpose of use (although their specific purpose of use differs). Moreover, the goods can have the same producer, distribution channels and relevant public. Consequently, they are considered similar.

The applicant’s limitation ‘except tubes and pipes’ excludes only goods which are identical to the opponent’s goods but does not prevent a finding that other goods could be similar to the opponent’s goods. Consequently, this limitation is not a bar for the finding of similarity.

2. 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 similar are directed at professionals in the construction field and also at consumers from among the public at large involved in do-it-yourself activities. The degree of attention will be high because the goods have a specialised nature, are not usually bought very often and because the right choice of product can have a significant impact on the building/construction in which it is used.

3. The signs

	Polythermid
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 mark is a figurative mark composed of a large stylised letter ‘P’ and the word ‘Polytherm’ depicted in standard bold title case.

The contested sign is the word mark ‘Polythermid’.

The earlier mark has no elements that could be considered clearly more distinctive than other elements. The Opposition Division considers that both the stylised letter ‘P’ and the word ‘Polytherm’ have a normal degree of distinctiveness. The applicant argues that the element ‘Polytherm’ is very weak because it is composed of the descriptive terms ‘POLY’ referring to ‘much, many’ or ‘polymer’ and ‘THERM’ referring to ‘heat’ or something warm. The Opposition Division cannot agree with this assertion because, first of all, neither the word ‘Polytherm’ as a whole nor its components ‘POLY’ and ‘THERM’ exist as such in the Spanish language. The Spanish equivalents of ‘POLY’ and ‘THERM’ would be ‘POLI’ and ‘TERM’. Second, it is true that the element ‘Polytherm’ will be perceived by the relevant public as suggestive of the meanings mentioned by the applicant but the specific combination ‘Polytherm’ as such does not have a clearly descriptive meaning for the relevant public. Overall, this element is not weak but rather normally distinctive.

The stylised letter ‘P’ in the earlier sign is the dominant element as it is the most eye-catching.

The contested mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘POLYTHERM*’. However, they differ in the additional letters ‘*id’ at the end of the contested sign and in the stylisation and the large letter ‘P’ of the earlier trade mark. Although the earlier trade mark is visually dominated by the large letter ‘P’, the element ‘Polytherm’ is still clearly visible and legible.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘POLYTHERM*’, present identically in both signs. The pronunciation differs in the sound of the letters ‛*ID’ of the contested mark, which have no counterparts in the earlier sign.

Although the earlier trade mark also contains an additional stylised letter ‘P’, it is likely to be perceived as a stylised complement of the word ‘Polytherm’ highlighting the first letter of this word. Consequently, the stylised letter ‘P’ in the earlier trade mark is not likely to be pronounced when referring to the earlier mark aurally.

Therefore, the signs are highly similar aurally.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the component ‘POLY‘ included in both signs will be associated with ‘much, many’ or ‘polymer’ and the components ‘THERM’/’THERMID’ will be associated with the notion of heat or something warm. In addition, the dominant stylised letter in the earlier trade marks bears the concept of the single letter ‘P’. On the whole, it is considered that the marks are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

The goods are partially similar and partially dissimilar. The degree of distinctiveness of the earlier trade mark is average. The degree of attention of the relevant public will be high.

The marks share the sequence of letters ‘POLYTHERM’ and differ in the additional two letters ‘*ID’ at the end of the contested sign. This means that there is an overwhelming similarity between the contested sign ‘Polythermid’ and the word component ‘Polytherm’ of the earlier trade mark. Although the earlier mark is visually dominated by the large letter ‘P’, the element ‘Polytherm’ is still clearly perceptible. In addition, as has been mentioned above, the word ‘Polytherm’ is normally distinctive for the relevant Spanish public. On the whole the similarities between the marks outweigh their differences.

In these circumstances, the Opposition Division considers that the relevant public, even if highly attentive, is likely to confuse the commercial origin of the similar goods sold under the trade marks in dispute.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the elements ‘POLY’ or ‘THERM’. In support of its argument the applicant refers to a number of EUTM registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘POLY’ or ‘THERM’. Under these circumstances, the applicant’s claims must be set aside.

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 partly well-founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As identity or 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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Vít MAHELKA

Lucinda CARNEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.