DECISION

of the Fourth Board of Appeal

of 18 April 2016

In Case R 1581/2015-4

Viatrans Gayrimenkul Gelistirme Kiralama ve Ticaret Anonim Sirketi
H. Yeten Caddesi, S. Seba BJK Tesisleri Asçioglu F-Ofis K:11 No:304 Besiktas - Istanbul Turkey	Applicant / Appellant

represented by Silex IP, Calle Velázquez, 109, 2 D, E-28006 Madrid, Spain

v

Ecotura GmbH Metten Stein + Design GmbH & Co. KG
Hammermühle 24 D-51491 Overath Germany	Opponents / Respondents

represented by CBH Rechtsanwälte Cornelius Bartenbach Haesemann & Partner Partnerschaft von Rechtsanwälten mbB, Bismarckstr. 11-13, D-50672 Köln, Germany

APPEAL relating to Opposition Proceedings No B 2 297 284 (European Union trade mark application No 12 099 818)

The Fourth Board of Appeal

composed of D. Schennen (Chairman and Rapporteur), S. Martin (Member) and L. Marijnissen (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 29.8.2013, the applicant sought to register the figurative mark

as a European Union trade mark (‘EUTM’), among others, for the following goods and services:

Class 17 ‒ Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 19 ‒ Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; shaped building, construction and road construction materials made of concrete, gypsum, earthen, clay, sand, natural stone, artificial stone, wooden, plastic or synthetic materials; building parts, buildings, poles, barriers; concrete panels, concrete pipes, concrete beams, concrete blocks, concrete bollards, concrete walls, concrete fences, concrete roof repair compounds, concrete slabs, concrete roof tiles, barrier of concrete, concrete poles for electric power lines; plaster for building purpose, namely, plaster boards, plaster panels, plaster walls, plasters for prefabricated buildings; bricks, rigid pipes, not of metal, tubes and connection pieces; glass blocks for building, glass bricks, glass tiles, glass panes, glass panels for building construction purposes.

Class 20 ‒ Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker and substitutes for all these materials, or of plastics.

Class 37 ‒ Building construction; repair; installation services; construction services, namely, custom construction of residential and commercial communities, building construction and repair, building demolition, consultation relating to painting of buildings, underwater repair, underwater building and construction, road paving; providing information relating to the rental of construction equipment; rental of construction and building equipment, rental of earth moving equipment and excavators, rental of bulldozers, rental of excavators.

2. On 15.1.2014, the opponents filed an opposition based on the earlier German trade mark No 302 012 001 885 for the word mark

Quasar

filed on 16.1.2012 and registered on 20.2.2012 for the following goods and services:

Class 17 ‒ Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials as far as not included in other classes; plastics (semi-finished); sealing, packing, stopping and insulating materials; flexible pipes, not of metal.

Class 19 ‒ Asphalt, pitch and bitumen; transportable buildings (not of metal); monuments (not of metal); building materials (not of metal), particularly building elements and building materials of concrete, natural stone and glass, for the covering/paneling of interior and exterior walls, ceilings and floors, aforesaid goods with various coatings, including in particular: building stones, paving stones, paving and garden panels for laying on the ground or floor and affixing to facades, kerbstones, step elements and step blocks as well as prefabricated building elements of concrete, in particular for the construction of steps and palisades and for moulded parts of concrete and natural stone for gardening and landscaping purposes, namely palisades, steles, troughs, fountains and benches; floor panels and floor guidance systems for blinds made of plastic.

Class 20 ‒ Worktops.

Class 37 ‒ Building construction; repair services with respect to the aforesaid goods in class 19; installation services.

3. The opposition was directed against the goods and services indicated in paragraph 1 and it was based on all the goods and services of the earlier German trade mark. The ground for opposition was the likelihood of confusion as laid down in Article 8(1)(b) EUTMR.

4. By decision of 8.6.2015, the Opposition Division upheld the opposition partly and rejected the EUTM applied for, for the goods and services mentioned above in paragraph 1. It held that:

• The goods and services mentioned above in paragraph 1 are either similar or identical to the goods and services for which the earlier trade mark is protected.

• The signs are visually, aurally and, for part of the public, conceptually similar to the extent that they have in common the word ‘Quasar’. The signs differ only in the additional letter ‘Q’ and the stylisation of the contested sign.

• ‘Quasar’ means a ‘bright object in space which looks like a star and produces energy’ in astronomy. For the part of public who does not know this word, the signs are conceptually not similar.

• The additional letter ‘Q’ does not introduce a substantial difference between the signs. Since it is the distinctive element ‘QUASAR’, which the signs have in common, that will be perceived as indicating the commercial origin of the goods and services.

• The relevant public is the public at large and professionals. The level of attention varies from average to higher than average.

5. On 5.8.2015, the applicant filed a notice of appeal against the decision. The statement of grounds of the appeal was filed on 24.9.2015. Its arguments can be summarized as follows:

• The contested goods and services are aimed at professionals and their level of attention is higher than average.

• Visually, the graphic representation and the size of the letter ‘Q’ in the contested sign differ from the earlier sign. Aurally, the signs differ in the pronunciation of the letter ‘Q’. The signs are visually and phonetically similar only to a low degree.

• Conceptually, ‘Quasar’ is a technical term used in astronomy and will not be understood by the vast majority of the relevant consumers. A conceptual comparison is therefore not possible for this part of the public. The consumers will grasp the concept attached to the letter ‘Q’ in the beginning of the contested decision.

• Since the signs are not similar, there is no need to compare the goods and services. There is no likelihood of confusion.

6. On 18.12.2015, the opponents submitted observations and asked for the appeal to be rejected in its entirety. They support the contested decision and state that the additional letter ‘Q’ in the contested sign will be perceived as an emphasis of the first letter of the word ‘QUASAR’. The signs are highly similar and there is a likelihood of confusion.

Reasons

7. The appeal is partly well founded. A likelihood of confusion within the meaning of Article 8(1)(b) EUTMR exists for all the goods and services which are subject of this appeal, with the exception of ‘mirrors, picture frames’ in Class 20 which are dissimilar to the earlier goods and services.

8. Pursuant to Article 8(1)(b) EUTMR, a trade mark applied for shall not be registered if because of its identity with, or similarity to, an 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.

9. Since the earlier mark is a German trade mark, the relevant territory for analysing the likelihood of confusion is Germany.

Comparison of the goods

10. The assessment of the similarity of goods and services must take into account all relevant factors, which include the nature, their purpose and method of use, and whether they are in competition with each other or complementary (29.9.1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods and services concerned (11.7.2007, T-443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (4.11.2003, T-85/02, Castillo, EU:T:2003:288, § 38).

11. The contested decision correctly found the following contested goods and services to be identical to the goods and services of the earlier trade mark:

Class 17 ‒ Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 19 ‒ Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; shaped building, construction and road construction materials made of concrete, gypsum, earthen, clay, sand, natural stone, artificial stone, wooden, plastic or synthetic materials; building parts, buildings, poles, barriers; concrete panels, concrete pipes, concrete beams, concrete blocks, concrete bollards, concrete walls, concrete fences, concrete roof repair compounds, concrete slabs, concrete roof tiles, barrier of concrete, concrete poles for electric power lines; plaster for building purpose, namely, plaster boards, plaster panels, plaster walls, plasters for prefabricated buildings; bricks, rigid pipes, not of metal, tubes and connection pieces; glass blocks for building, glass bricks, glass tiles, glass panes, glass panels for building construction purposes.

Class 20 ‒ Furniture; goods (not included in other classes) of wood, cork, reed, cane, wicker and substitutes for all these materials, or of plastics.

Class 37 ‒ Building construction; repair; installation services; construction services, namely, custom construction of residential and commercial communities, building construction and repair, building demolition; providing information relating to the rental of construction equipment.

12. The contested decision considered the other goods and services which are subject of the appeal to be similar to the goods and services of the earlier trade mark. The applicant did not contest the findings of the Opposition Division regarding the comparison of the goods and services. However, the Board is entitled to review the comparison of the goods even when it is not contested by the appellant (1.2.2005, T-57/03, Hooligan, EU:T:2005:29, § 21, 24), to the extent this is needed to ascertain whether a decision on the opposition with the same outcome may be lawfully taken (23.9.2003, T-308/01, EU:T:2003:241, § 29, 32).

13. The Opposition Division found the contested ‘mirrors, picture frames’ similar to the opponents’ ‘worktops’ in Class 20. It reasoned that these goods are accessories and fittings that equip a house and make it suitable to live in. The only reason that both goods are used in the household is not enough to conclude that they are similar. Worktops are the work surfaces which are used in the kitchen. On the other hand mirrors and picture frames are simply accessories, they are not typically used in the kitchen. These goods are sold in different kind of stores, in the case of ‘worktops’ in specialised kitchen furniture shops. They have a different nature and purpose; they are neither in competition nor complementary. They are therefore dissimilar.

14. For the remainder, the contested decision is to be confirmed. The contested ‘consultation relating to painting of buildings, underwater repair, underwater building and construction, road paving’ are similar to the opponents’ ‘building construction; repair’. Consultation (i.e. consulting) services are usually similar to the services which are subject of the consultation. Construction consultation services are often provided by the companies which have expertise in construction and provide construction services too. Accordingly, they target the same consumers and are offered by the same companies.

15. The contested ‘rental of construction and building equipment, rental of earth moving equipment and excavators, rental of bulldozers, rental of excavators; providing information relating to the rental of construction equipment’ are similar to the opponents’ ‘building construction services’. These services are rendered by the same companies to the same public and they have the same final purpose. They are complementary as the respective equipment (bought or on the basis of a rental) is needed to perform the building construction work.

Comparison of the marks

16. As regards the comparison of the signs, the global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (11.11.1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22.6.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

17. The earlier mark is a word mark consisting of a single word ‘Quasar’. The contested sign is a figurative mark consisting of a letter ‘Q’ placed above a smaller word element ‘QUASAR’ written in black with a stylised typeface, but clearly to be read as ‘QUASAR’.

18. In the contested mark ‘QUASAR’ is the only word, already for this reason the public will primarily focus on it. The public is likely to connect the element ‘Q’ and the word ‘QUASAR’ to each other, since the element ‘Q’ can be seen as indicating the first letter of the word ‘QUASAR’, for which reason both elements are perceived together. The slight stylisation of the contested mark is decorative and will not take attention. ‘QUASAR’ is therefore the distinctive element of the contested sign.

19. Visually, the contested sign reproduces the earlier sign in its entirety as its distinctive element. The marks are visually similar to a high degree.

20. Aurally, the contested sign will be pronounced as ‘QUASAR’, with the stress on the second syllable. Since the letter ‘Q’ will be perceived as its initial letter, the public will tend not to pronounce this element at all, so that the marks are aurally identical. If it is pronounced, the earlier mark pronounced as ‘KWA-SAHR’ still remain similar to ‘KU-KWA-SAHR’.

21. Conceptually, a quasar means a ‘bright object in space which looks like a star and produces energy’. As a dictionary word it will indicate a concept, related to astronomy, regardless whether average consumers have an idea of what a ‘quasar’ exactly is or how it can be described in scientific terms. The letter ‘Q’ does not have any meaning and will be associated with the word ‘QUASAR’ as it is its first letter. At the end it is not relevant if the public knows the meaning of this word or not; the words are the same and will be perceived as having the same meaning, so that the signs are conceptually identical. If not, no conceptual comparison arises.

Global assessment of the likelihood of confusion

22. A likelihood of confusion on the part of the public must be assessed globally, and that global assessment implies some interdependence between the factors taken into account and in particular similarity between the signs 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 signs, and vice versa (29.9.1998, C-39/97, Canon, EU:C:1998:442, § 17). 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 (29.9.1998, C-39/97, Canon, EU:C:1998:442, § 18).

23. The goods and services in Classes 17, 19 and 37 are aimed both at public at large and professionals from the construction sector. Their level of attention is likely to be higher than average. Regarding the goods in Class 20, the relevant public is the public at large and the level of attention is average.

24. The opponents did not claim that the earlier trade mark enjoys an enhanced distinctiveness by virtue of intensive use or reputation. Consequently, only its inherent distinctive character can be considered. As the earlier trade mark is not related to any characteristics of the goods and services in question, its inherent distinctive character is average.

25. The earlier trade mark is reproduced in the contested mark as its distinctive element. The earlier mark has an average degree of distinctiveness. Even though a part of public has a high degree of attention, taking into account the interdependence rule, the relevant public may think that the goods and services come from the same or economically-linked undertakings. Regarding the goods and services which were found identical or similar, there is a likelihood of confusion.

26. However, there is no likelihood of confusion regarding ‘mirrors, picture frames’ in Class 20, as they are dissimilar to the earlier goods and services. The opposition is to be rejected for these goods.

27. Consequently, the contested decision is annulled insofar as the opposition was upheld for ‘mirrors, picture frames’ in Class 20. The appeal is dismissed for the remainder.

Costs

28. Since the opposition and the appeal are successful in part, each party shall bear its own costs and fees in the opposition and appeal proceedings pursuant to Article 85(2) EUTMR.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision insofar as it upheld the opposition in relation to the goods ‘mirrors, picture frames’ in Class 20 and rejects the opposition against these goods;

2. Dismisses the appeal for the remainder;

3. Orders each party to bear its own costs for the opposition and the appeal proceedings.

Signed D. Schennen

Signed S. Martin

Signed L. Marijnissen

Registrar: Signed H.Dijkema