DECISION

of the Fourth Board of Appeal

of 27 March 2018

In case R 2077/2017-4

Beat Guhl
Unterholzstrasse 21 8561 Ottoberg Switzerland	Opponent / Appellant

represented by Forresters, Port of Liverpool Building, Pier Head, Liverpool, Merseyside, L3 1AF United Kingdom

v

Patrick McHugh
c/o The Folding Door Company of Ireland Grants Drive Greenogue Business Park Rathcoole Dublin Ireland	Applicant / Respondent

represented by Michael O'Connor, c/o O'Connor Intellectual Property, Suite 207, Q House, Furze Road, Sandyford, Dublin 18, Ireland

APPEAL relating to Opposition Proceedings No B 2 269 291 (European Union trade mark application No 12 000 006)

The Fourth Board of Appeal

composed of D. Schennen (Chairman), L. Marijnissen (Rapporteur) and R. Ocquet (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 19 July 2013, Patrick McHugh (‘the applicant’) sought to register the word mark

SKYFRAME

as a European Union trade mark for the following goods and services:

Class 6 - Doors, gates, windows and window coverings of metal; Aluminium windows; casement windows of metal; fitted windows of metal; fittings of metal for windows; frames of metal for windows; handles of metal for windows; hinges for doors and windows (metal - ); ironwork for windows; latches (Metal - ) being fitted for windows; metal sash fasteners for windows; metal sash windows; rollers (Metal -) for sliding windows; roof fanlights [windows] of metal; roof lights [windows] of metal; roof windows of metal; sash balances of metal for windows; skylight windows (Metal -) for use in buildings; wall windows of metal; roof windows; skylights; sliding doors; folding doors of metal; folding, sliding doors of metal; mullions of metal; Fittings for Doors, gates, windows and window coverings of metal; double glazing panels (Metal -); double glazing panels (Metal -) incorporating insulating glass; triple glazing panels (Metal -); triple glazing panels (Metal -) incorporating insulating glass; roof light abutments of metal; mechanisms (Metal -) for locking windows; mechanisms (Metal -) for lifting windows; mechanisms (Metal -) for opening windows; mechanisms (Metal -) for rolling windows; mechanisms (Metal -) for sliding windows; rollers (Metal -) for sliding windows; ventilation grilles (Metal -) for fitting in windows; sliding doors; Mechanisms (Metal -) for sliding doors; Metal tracks for sliding doors; Rails (Metal -) for sliding doors; Rollers (Metal -) for sliding doors; Runners (Metal -) for sliding doors; rails (Metal -) for folding doors;

Class 19 - Doors, gates, windows and window coverings, not of metal; Casement windows, not of metal; coloured glass for windows; frames (Non-metallic -) for windows; glass for windows; glass windows; roof fanlights [windows] of non-metallic materials; roof windows made of plastic; roof windows (non-metallic -); vinyl windows; window glass except glass for vehicle windows; roof windows; skylights; folding doors, not of metal; sliding doors not of metal; folding, sliding doors not of metal; floors, not of metal; mullions (Non-metallic -); Fittings for Doors, gates, windows and window coverings, not of metal; double glazing panels (Non-metallic -); double glazing panels (Non-metallic -) incorporating insulating glass; triple glazing panels (Non-metallic -); triple glazing panels (Non-metallic -) incorporating insulating glass; glass panes; solar control glazing; self-cleaning glass; roof light abutments (not of metal -);

Class 20 - Hinges for doors and windows (non-metallic -); mechanisms (non-metallic, non-electric -) for locking windows; mechanisms (non-metallic, non-electric -) for lifting windows; mechanisms (non-metallic, non-electric -) for opening windows; mechanisms (non-metallic, non-electric -) for rolling windows; mechanisms (non-metallic, non-electric -) for sliding windows; rollers (non-metallic -) for sliding windows; ventilation grilles (Non-metallic -) for fitting in windows; sliding doors; Mechanisms (Non-metallic, non-electric -) for sliding doors; Non-metallic tracks for sliding doors; Rails (Non-metallic -) for sliding doors; Rollers (Non-metallic -) for sliding doors; Runners (Non-metallic -) for sliding doors; rails (Non-metallic -) for folding doors;

Class 37 - Glazing, installation, maintenance and repair of glass, windows and blinds; Doors and Windows (Installation of -); installation of draft proofing for sash windows; replacement of windows; construction of floors; Double glazing installation; triple glazing installation.

2. On 12 November 2013, Beat Guhl (‘the opponent’) filed a notice of opposition based on the following earlier rights:

1. International registration No 868 910 for the mark in standard characters

SKY-FRAME

designating Spain, the Czech Republic, Portugal, Austria, Slovakia, Poland, Italy, Hungary, Greece, Germany, France and Slovenia, registered on 28 October 2005 and renewed until 28 October 2025 for the following goods:

Class 6 - Metal windows;

Class 19 - Non-metallic windows.

2. International registration No 915 105 for the mark

designating Spain, the Czech Republic, Ireland, Austria, the United Kingdom, Italy, the Benelux, Slovenia, Sweden, Portugal, Slovakia, Denmark, Poland, Hungary, Greece, Germany, Finland and France, registered on 26 January 2007 and renewed until 26 January 2027 for the following goods:

Class 6 - Windows of metal, door and window fittings of metal;

Class 19 - Windows not of metal, window frames not of metal, window glass;

Class 20 - Window fittings, not of metal.

3. The opposition was based on the grounds of Article 8(1)(a) and (b) EUTMR, directed against all the goods and services applied for and based on all the goods for which the earlier marks were registered.

4. In response to the opposition, the applicant requested that the opponent prove use of its earlier marks pursuant to Article 42(2) and (3) (now Article 47(2) and (3)) EUTMR. Evidence was filed by the opponent.

5. By decision of 25 July 2017 (‘the contested decision’), the Opposition Division upheld the opposition for most of the contested goods and services. The opposition was rejected only for the services ‘installation, maintenance and repair of blinds; doors (installation of-); installation of draft proofing for sash windows; construction of floors’ in Class 37. Each party was ordered to bear its own costs.

6. The Opposition Division reasoned that genuine use was proven for ‘metal windows; non-metallic windows’ as protected by the earlier mark referred to above in paragraph 2 under a) and for ‘windows of metal; windows not of metal, window frames not of metal, window glass’ as protected by the earlier mark referred to under b), at least in Italy, France, Germany, Austria, Poland, Spain, Sweden and the Benelux.

7. It further reasoned that the contested goods and services were identical or similar with the exception of the Class 37 services ‘installation, maintenance and repair of blinds; doors (installation of-); installation of draft proofing for sash windows; construction of floors’ which were found to be dissimilar. It reasoned that the opponent’s goods were windows, window frames and glass for windows. The contested services related specifically to blinds, doors, floors and the installation of draft-proofing for windows. The Opposition Division did not believe that the producer of the earlier goods would also provide these services, which were not directly connected with the earlier goods. There was no complementarity between them and they would be aimed at different consumers. The identical and similar goods and services were directed at the public at large and specialists in the construction industry. The degree of attention of the relevant public varied from average to high. Visually and conceptually the signs were highly similar, aurally they were identical. The inherent distinctiveness of the earlier mark was normal. It concluded that there was a likelihood of confusion for all the identical and similar goods and services.

8. On 24 September 2017 the opponent filed a notice of appeal followed by his statement of grounds on 27 November 2017 in which he requests that the Board uphold the opposition for all the contested goods and services including ‘installation, maintenance and repair of blinds; doors (installation of-); installation of draft proofing for sash windows; construction of floors’ in Class 37, i.e. the services for which the opposition was rejected, and order the applicant to bear the costs of the proceedings.

9. He argues that windows and doors are sold together with the installation services relating to them. Similarly, blinds can be located within doors and windows and it is indeed very fashionable for them to be part and parcel of doors and windows. Draft proofing is part and parcel of the installation maintenance and repair of doors and windows, as, without it, people would not request double or triple glazing on the basis that it would have no use. Similarly, when doors and windows are purchased, they are generally installed by the company from whom they are purchased and floors are constructed around those windows and doors in order that there is draft proofing and the doors and windows fit into the space provided. The windows covered by the earlier marks can be sliding windows, slash windows, bi-folding or windows that are moved in any other way. In particular the specialist products of the opponent are large windows which stand from floor to ceiling and can be deemed doors at the same time as windows. When sliding doors slide on parallel rails, they are used on a special kind of floor that must be installed by the manufacturer of the window. The services for which the opposition was rejected are, thus, similar as well.

10. The applicant did not file any observations in reply.

Reasons

11. The appeal is admissible and well founded. Also for the contested services ‘installation, maintenance and repair of blinds; doors (installation of-); installation of draft proofing for sash windows; construction of floors’ in Class 37 there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

Proof of use

12. A valid request for proof of use was filed. The assessment of the evidence filed by the opponent was not contested by the parties and the Board sees no reason to deviate from it. For the purposes of the examination of the opposition, the earlier marks shall be deemed to be registered for ‘windows of metal’ in Class 6 and ‘non-metallic windows/windows not of metal, window frames not of metal, window glass’ in Class 19, at least in the designated Member States Italy, France, Germany, Austria, Poland, Spain, Sweden and those forming the Benelux.

Article 8(1)(b) EUTMR

13. Under Article 8(1)(b) EUTMR, upon opposition of the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

14. The opposition is based on two international registrations designating, amongst others, the various EU Member States as indicated in paragraph 12 above. The relevant territory for analysing the likelihood of confusion concerns all these Member States.

Comparison of the signs

15. The conflicting signs are visually quasi identical and aurally identical. For the English-speaking part of the relevant public, who will perceive the conflicting marks as composed of the meaningful words ‘sky’ and ‘frame’, the marks are also identical from a conceptual point of view.

Comparison of the goods and services

16. The contested services which are the subject of this appeal are ‘installation, maintenance and repair of blinds; doors (installation of-); installation of draft proofing for sash windows; construction of floors’ in Class 37.

17. These services have to be compared with the earlier goods in Classes 6 and 19 for which use has been proven, namely ‘windows of metal’ in Class 6 and ‘non-metallic windows/windows not of metal, window frames not of metal, window glass’ in Class 19.

18. There is no clear border between doors and windows. Especially in modern houses and buildings large windows can stand from floor to ceiling having the function of a door and a window at the same time. As such ‘window doors’ or ‘door windows’ are normally installed, maintained and repaired by the manufacturer of the goods, these goods and services target the same public and the services may also be provided independently of the purchase of the goods, the contested services ‘doors (installation of-)’ are similar to the earlier goods ‘windows, window frames and window glass’ for which use has been proven. In fact, the same and correct line of reasoning can be followed as to why the Opposition Division found the earlier goods for which use was proven similar to the contested ‘installation, maintenance and repair of glass, windows; windows (installation of-); replacement of windows; double glazing installation; triple glazing installation’ to which reference is made.

19. As regards the contested services ‘installation of draft proofing for sash windows’, the opponent correctly argued that draft proofing is an integrated part of the installation, maintenance and repair of doors and windows which include sash windows. These services are similar to the earlier goods for the same reason as to why the installation of doors and windows is similar to the earlier goods.

20. As regards the contested services ‘installation, maintenance and repair of blinds’, as correctly argued by the opponent, blinds can be an integrated part of doors and windows. In that scenario, the services to install, maintain and repair them are provided by the same manufacturer of the earlier goods, targeting the same public and being supplied via the same channels. Also these contested services are similar.

21. The contested goods ‘construction of floors’ are, as explained by the opponent, provided by the manufacturer of doors and windows when they take care of the installation of these goods, especially for doors and windows which stand from floor to ceiling and which have the capacity to slide. In that case, floors are constructed around those doors and windows in order to make sure that there is draft proofing and that the doors and windows fit into the space provided and can slide properly for which the proper installation of the floor is essential. As explained by the opponent, when sliding doors slide on parallel rails they are used on a special kind of floor that must be installed by the manufacturer of the window.

22. In sum, all the contested services in Class 37 which are the subject of this appeal are similar to the earlier goods for which use of the earlier marks has been proven.

Overall assessment of the likelihood of confusion

23. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

24. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular the similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

25. For the purpose of that global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The level of attention of the relevant consumer is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

26. The relevant public for the goods and services concerned includes the public at large and professionals in the construction industry including building contractors, designers and architects. Taking into account the nature of the goods and services concerned the level of attention, irrespective of whether it concerns the professional public or the public at large, will be above average.

27. The earlier marks as a whole have no meaning for the earlier goods. Their inherent distinctive character is normal. Enhanced distinctiveness of the earlier marks was not claimed by the opponent.

28. Taking into account the similarity of the contested services, the quasi identity of the conflicting signs and the normal level of inherent distinctiveness of the earlier marks, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR on the part of the relevant public, even taking into account an enhanced level of attention of the relevant public.

29. To conclude, the opponent is successful in its appeal. The contested decision shall be annulled insofar as the opposition was rejected for the services ‘installation, maintenance and repair of blinds; doors (installation of-); installation of draft proofing for sash windows; construction of floors’ in Class 37 . Also for these services the opposition shall be upheld and the contested application be rejected.

Costs

30. The applicant (respondent) is the losing party within the meaning of Article 109(1) EUTMR in the appeal proceedings. He is also the losing party of the opposition proceedings as the final result is that the opposition succeeds for all the contested goods and services. He must bear the costs incurred by the opponent (appellant) in the opposition and the appeal proceedings.

Fixing of costs

31. Pursuant to transitional provision Article 38(2)(i) of Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017 (OJ EU L 205 of 8.8.2017, p. 39), Rule 94 of the Commission Regulation No 2868/95 of 13 December 1995 (CTMIR) continue to be applicable to the present case as costs were incurred in proceedings initiated before the abovementioned date.

32. In accordance with Article 109(1) and (7) EUTMR and Rule 94(7)(d)(i) and (v) CTMIR, the Board fixes the amount of representation costs to be paid by the respondent to the appellant for the appeal proceedings at EUR 550 and for the opposition proceedings at EUR 300, this irrespective of whether they have been actually incurred. In addition the respondent shall reimburse to the appellant the opposition fee of EUR 350 and the appeal fee of EUR 720. The total amount is EUR 1 920.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision insofar as the opposition was rejected for the following services:

Class 37 - Installation, maintenance and repair of blinds; doors (installation of-); installation of draft proofing for sash windows; construction of floors;

2. Upholds the opposition and rejects the European Union trade mark application No 12 000 006 also for these services;

3. Orders the respondent to bear the costs and fees incurred by the appellant in the opposition and the appeal proceedings;

4. Fixes the amount of costs and fees to be paid by the respondent to the appellant for the opposition and appeal proceedings at EUR 1 920.

Signed D. Schennen

Signed L. Marijnissen

Signed R. Ocquet

Registrar: Signed p.o. N. Granado Carpenter