OPPOSITION No B 2 360 181

Viuda de Gabriel Mari Montañana, S.A., Avenida La Senyena, 30, 46133 Meliana (Valencia), Spain (opponent), represented by Demarks&Law, Cirilo Amorós 57, 46004 Valencia, Spain (professional representative)

a g a i n s t

Ernst Pfaff, Zwerchgasse 9, 86150 Augsburg, Germany (applicant), represented by Patentanwälte Munk, Prinzregentenstr. 3, 86150 Augsburg, Germany (professional representative).

On 23/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 360 181 is partially upheld, namely for the following contested goods and services:

Class 6: Metal building materials; Transportable buildings of metal; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware, Including screws, screw nuts and Nails; Pipes and tubes of metal; And parts thereof, included in class 6.

Class 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, in particular outdoor, terrace and party heaters, and air-conditioning apparatus; Parts for the aforesaid goods (included in class 11).

Class 20: Workshop, farm and garden furniture, included in class 20, including work benches, work tables, tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools, boxes for ironmongery and small items of metal hardware, tool boxes of plastic with or without parts of wood and/or metal; Furniture for motor homes; Garden furniture; Parts for the aforesaid goods (included in class 20).

Class 35: Retailing, in particular via the Internet, in the fields of: machine tools, machines and mechanical equipment and apparatus for woodworking, metal treating, plastics processing, soil cultivation, agricultural and forestry work, building construction, housing, farm, garden and road maintenance, tools, metal building materials, transportable buildings of metal, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, screws, nuts and nails, pipes and tubes of metal, compost silos of metal with or without parts of wood and/or plastic, tool boxes of metal with or without parts of wood and/or plastic, vice benches of metal, construction articles, DIY articles and garden articles, flexible pipes, tarpaulins and sacks and bags, including industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, air-conditioning apparatus, work benches, work tables, tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools, boxes for ironmongery and small items of metal hardware, tool boxes of plastic with or without parts of wood and/or metal, camping furniture, garden furniture.

2. Community trade mark application No 12 480 521 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 12 480 521, namely against some of the goods and services in Classes 6, 11 and 35 and all goods in Class 20. The opposition is based on, inter alia, Spanish trade mark registrations No 2 942 668 and No 2 843 608. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registrations No 2 942 668 and No 2 843 608.

1. The goods and services

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

ES 2 942 668:

Class 20: Stools and staircases not included in other classes.

ES 2 843 608:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks, elevator chains, non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; ores of metal and especially sinks of metal and staircases and ladders of metal.

Class 11: Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 35: Advertising and help in the working or management of a commercial or industrial undertakings; commercial administration, office functions, importation and exportation agencies, retail services and wholesale or via computer networks; exclusively sales and commercial representations.

The contested goods and services are the following:

Class 6: Metal building materials; Transportable buildings of metal; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware, Including screws, screw nuts and Nails; Pipes and tubes of metal; Vice benches of metal; And parts thereof, included in class 6.

Class 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, in particular outdoor, terrace and party heaters, and air-conditioning apparatus; Parts for the aforesaid goods (included in class 11).

Class 20: Workshop, farm and garden furniture, included in class 20, including work benches, work tables, tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools, boxes for ironmongery and small items of metal hardware, tool boxes of plastic with or without parts of wood and/or metal; Furniture for motor homes; Garden furniture; Parts for the aforesaid goods (included in class 20).

Class 35: Retailing, in particular via the Internet, in the fields of: machine tools, machines and mechanical equipment and apparatus for woodworking, metal treating, plastics processing, soil cultivation, agricultural and forestry work, building construction, housing, farm, garden and road maintenance, tools, metal building materials, transportable buildings of metal, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, screws, nuts and nails, pipes and tubes of metal, compost silos of metal with or without parts of wood and/or plastic, tool boxes of metal with or without parts of wood and/or plastic, vice benches of metal, construction articles, DIY articles and garden articles, flexible pipes, tarpaulins and sacks and bags, including industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, air-conditioning apparatus, work benches, work tables, tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools, boxes for ironmongery and small items of metal hardware, tool boxes of plastic with or without parts of wood and/or metal, camping furniture, garden furniture.

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

The term ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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’).

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 6

The contested metal building materials; transportable buildings of metal; non-electric cables and wires of common metal; ironmongery, small items of metal hardware, including screws, screw nuts and nails; pipes and tubes of metal are identically contained in the applicant’s and opponent’s lists of goods in Class 6.

The contested parts of metal building materials; transportable buildings of metal; non-electric cables and wires of common metal; ironmongery, small items of metal hardware, including screws, screw nuts and nails; pipes and tubes of metal, included in class 6 are similar to the earlier goods in Class 6 to which the corresponding contested goods have been compared above. The relevant public may expect these parts and fittings to be produced by, or under the control of, the same manufacturer. Furthermore, the goods target the same end users and can share distribution channels. In addition, some of them are complementary.

The contested vice benches of metal; and parts thereof, included in class 6 are dissimilar to the opponent’s goods in Classes 6, 11 and 20. The contested goods are devices used to firmly hold an item while working on it. The purpose of these goods is different than the purpose of the opponent’s goods. Furthermore, the compared goods have different natures, manufacturers, distribution channels. They are neither complementary nor in competition.

The contested vice benches of metal are also dissimilar to the opponent’s retail services and wholesale or via computer networks in Class 35. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition nor necessarily complementary.

The remaining opponent’s services in Class 35 assist in the operation and management of other entities. They help other businesses to function in a business-like manner. They are dissimilar to the contested goods for the same reasons as mentioned above when comparing the other services in Class 35 with the applicant’s goods. The mere fact that some goods or services may appear in advertisements is insufficient for finding a similarity.

Contested goods in Class 11

The contested apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, in particular outdoor, terrace and party heaters, and air-conditioning apparatus are included in the broad categories of the opponent’s installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. Therefore, they are considered identical.

The contested parts for apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, in particular outdoor, terrace and party heaters, and air-conditioning apparatus (included in class 11) are similar to the earlier goods in Class 11 to which the corresponding contested goods have been compared above. The relevant public may expect these parts and fittings to be produced by, or under the control of, the same manufacturer. Furthermore, the goods target the same end users and can share distribution channels. In addition, they may be are complementary.

Contested goods in Class 20

The contested workshop, farm and garden furniture, included in class 20, including work benches, work tables, tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools, boxes for ironmongery and small items of metal hardware, tool boxes of plastic with or without parts of wood and/or metal; furniture for motor homes; garden furniture overlap with the opponent’s stools and staircases not included in other classes, because either stools or staircases can also be used in a workshop, farm, garden or motor homes. Therefore, they are considered identical.

The contested parts for workshop, farm and garden furniture, included in class 20, including work benches, work tables, tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools, boxes for ironmongery and small items of metal hardware, tool boxes of plastic with or without parts of wood and/or metal (included in class 20); parts for furniture for motor homes (included in class 20); parts for garden furniture (included in class 20) are similar to the earlier goods in Class 20 to which the corresponding contested goods have been compared above. The relevant public may expect these parts and fittings to be produced by, or under the control of, the same manufacturer. Furthermore, the goods target the same end users and can share distribution channels. In addition, they may be complementary.

Contested services in Class 35

The contested retailing, in particular via the Internet, in the fields of: machine tools, machines and mechanical equipment and apparatus for woodworking, metal treating, plastics processing, soil cultivation, agricultural and forestry work, building construction, housing, farm, garden and road maintenance, tools, metal building materials, transportable buildings of metal, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, screws, nuts and nails, pipes and tubes of metal, compost silos of metal with or without parts of wood and/or plastic, tool boxes of metal with or without parts of wood and/or plastic, vice benches of metal, construction articles, DIY articles and garden articles, flexible pipes, tarpaulins and sacks and bags, including industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, air-conditioning apparatus, work benches, work tables, tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools, boxes for ironmongery and small items of metal hardware, tool boxes of plastic with or without parts of wood and/or metal, camping furniture, garden furniture is included in the broad category of the opponent’s retail services and wholesale or via computer networks that are not limited in the list to the sale of particular goods. Therefore, these services are considered identical.

2. The signs

	Practixx
Earlier trade marks	Contested sign

The relevant territory is Spain.

Visually, the signs are similar to the extent that they coincide in the letters ‘practi’. However, they differ in the final letters of each sign ‘c’/’xx’. Furthermore, they differ in the accent above the letter ‘a’, graphical presentation of letters and figurative element of the earlier marks.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛P-R-A-C-T-I’ present identically in both signs, and to that extent the signs are aurally similar. Although, the two final letters of each sign are different ‘C’/’XX’, they are pronounced as ‘K’/‘KS’. Therefore, the pronunciation will differ only in the final sound ‘S’.

Conceptually, although the signs have no meaning in Spanish, the relevant public may perceive in both of them an allusion to the Spanish word ‘práctico’ meaning ‘practical’, ‘handy’ or ‘useful’. As both signs will be perceived as referring to the same concept, they are conceptually identical.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are highly similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements. However, the Opposition Division notices that the signs may be associated with the Spanish word ‘práctico’ meaning ‘practical’, ‘handy’ or ‘useful’. Bearing in mind that the relevant goods are various articles used at home or goods used in construction, it is considered that the signs may evoke a practical aspect of these goods. Consequently, the distinctiveness of the words ‘Práctic’ and ‘Practixx’ is lower than normal. The same applies in relation to services which consist in retailing of such goods.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than normal for all of the goods and services in question.

5. 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 and services found to be identical or similar are directed at the public at large and at professionals. The degree of attention may vary from average to higher than average.

6. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar and partly dissimilar.

The signs are visually similar to the extent that they coincide in six letters, ‘PRACTI-’, out of seven in the earlier marks and eight letters in the contested sign, respectively. The signs differ in the accent above the letter ‘A’ and in one final letter of the earlier marks and two final letters of the contested sign. Therefore, they have a similar structure. Aurally, the signs are very close as they differ in only one final sound.

Conceptually, the signs are identical for a part of the relevant public. Despite being allusive of the practical value of the goods/services the words ‘PRÁCTIC’ and ‘PRACTIXX’ as such do not exist in Spanish. The figurative element and graphical representation of the letters of the earlier marks are not particularly elaborate.

Although it is considered that the degree of distinctiveness of the earlier marks is lower than normal in relation to the relevant goods and services, this does not necessarily mean that it will not be taken into consideration by the relevant public. It should be noted that, ‘even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered’ (see judgment of 13/12/2007, T-134/06, ‘Pagesjaunes.com’, paragraph 70 and case-law cited therein).

According to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them. Moreover, consumers generally tend to remember similarities rather than dissimilarities between signs.

Taking all the above into account, even if the degree of attention of the relevant public may be higher in relation to some goods and services, the additional, differing, elements of the contested sign are not sufficient to counteract the similarities, and at least a part of the relevant public, when encountering the signs in relation to identical or similar goods and services, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.

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 partially well founded on the basis of the opponent’s Spanish trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar 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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the Community trade mark registration No 127 068 for the figurative mark ‘ ’. Since this mark cover the same or a narrower scope of goods than the earlier Spanish trade mark registration No ES 2 843 608, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. Consequently, it is unnecessary to examine the evidence of use filed by the opponent in relation to this earlier mark.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Janja FELC

Justyna GBYL

Robert MULAC

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.