DECISION

of the Fifth Board of Appeal

of 11 November 2019

In case R 370/2016-5

Ernst Pfaff

Zwerchgasse 9

86150 Augsburg

Germany

Applicant / Appellant

represented by Patentanwälte Munk, Prinzregentenstr. 3, 86150, Augsburg, Germany

Viuda de Gabriel Mari Montañana, S.A.

Avenida La Senyena, 30

46133 Meliana (Valencia)

Spain

Opponent / Defendant

represented by Demarks&Law, Cirilo Amorós 57, 46004, Valencia, Spain

APPEAL relating to Opposition Proceedings No B 2 360 181 (European Union trade mark application No 12 480 521)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), A. Kralik (Rapporteur) and C. Govers (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

By an application filed on 7 January 2014, Ernst Pfaff (‘the applicant’) sought to register the word mark

Practixx

for, inter alia, the following list of goods and services as limited on 14 April 2016:

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.

The application was published on 24 February 2014.
On 20 May 2014, Viuda de Gabriel Mari Montañana, S.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods and services (those listed above).
The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.
The opposition was based on the following three earlier rights:

European Union trade mark registration No 127 068 filed on 1 April 1996 and registered on 10 June 1998 for the following goods (as limited by the revocation decision No 12 825C – see below):

Class 6 – Metal building materials; ironmongery, small items of metal hardware; pipes and tubes of metal; and especially sinks of metal and step stools of metal;

Class 11 – Installations for water supply and sanitary purposes.

Spanish trade mark registration No 2 843 608 filed on 6 September 2008 and registered on 14 April 2009 for the following goods (as limited by revocation judgment, 7 November 2016, Juzgado de lo Mercantil de Valencia – see below):

Class 6 – Metal building materials; pipes and tubes of metal;

Class 11 – Water supply and sanitary purposes.

Spanish trade mark registration No 2 942 668 filed on 6 August 2010 and registered on 26 January 2011 for the following goods (as limited by revocation judgment, 7 November 2016, Juzgado de lo Mercantil de Valenci – see below):

Class 20 – Stools not included in other classes.

On 11 December 2014 (within the deadline), the applicant filed its request for proof of use of earlier EUTM No 127 068, pursuant to Article 42(2) EUTMR.
On 5 March 2015, the opponent filed the proof of use.
On 18 March 2015, the proof of use was notified to the applicant, who submitted its observations in reply on 13 May 2015.
On 23 July 2015, the opponent filed its rejoinder.
By decision of 23 December 2015 (‘the contested decision’), the Opposition Division partially upheld the opposition on the grounds that there was a likelihood of confusion, namely for:

It gave, in particular, the following grounds for its decision:

The decision was based on the opponent’s Spanish trade mark registrations No 2 942 668 and No 2 843 608 (which were not subject to proof of use);
Goods and services were found to be identical or similar and are directed at the public at large and at professionals. The degree of attention may vary from average to higher than average;
The marks are visually, aurally and conceptually highly similar:

Visually, they coincide in the letters ‘practi’, and only differ in the final letters of each sign ‘c’/’xx’, the accent above the letter ‘a’ and the stylisation element of the earlier marks;
Aurally, they coincide as to ‛P-R-A-C-T-I’ and differ only in the final sound ‘S’ sound of the ‘XX’;
Conceptually, the relevant public may perceive in both of them an allusion to the Spanish word ‘práctico’ meaning ‘practical’, ‘handy’ or ‘useful’ – they are conceptually identical.

The concept of the signs may evoke a practical aspect of certain goods and services – consequently, the distinctiveness of the words ‘Práctic’ and ‘Practixx’ is lower than normal. The marks have no elements which could be considered clearly more dominant (visually eye-catching) than others;
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation;
There is a likelihood of confusion for the goods and services that are similar and identical:

The signs are visually similar to the extent that they coincide in six letters, ‘PRACTI-’;
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. The allusive nature does not affect this;
The figurative element and graphical representation of the letters of the earlier marks are not particularly elaborate.
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.
Consumers are likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.

On 16 February 2016, the applicant filed an appeal against the contested decision, requesting that the decision be set aside to the extent that the opposition was partially accepted. The statement of grounds of the appeal was received on 22 April 2016 and contained a request for suspension of the proceedings due to pending revocation proceedings against all the earlier marks.
On 2 June 2016, the applicant filed further documents to support its request for suspension as to the earlier Spanish trade marks, i.e. a decree issued on 24 May 2016 by Juzgado de lo Mercantil de Valencia stating that the application for revocation had been accepted.
In its response received on 22 June 2016, the opponent requested that the appeal be dismissed.
On 5 July 2016, the applicant informed the Office that the opponent had filed a response before Juzgado de lo Mercantil de Valencia by which it acknowledged the claims for partial revocation of the earlier Spanish trade marks and asked the Court to issue a judgment confirming such partial revocation. The applicant submitted a copy of the opponent’s response.
On 10 October 2016, the applicant submitted a copy of the judgment issued on 26 September 2016 by the Juzgado de lo Mercantil de Valencia declaring the revocation of the earlier Spanish trade marks.
On 13 October 2016, the documents submitted by the applicant on 10 October 2016 were communicated to the opponent.
On 9 November 2016, the opponent informed the Office that the judgment issued on 26 September 2016 by the Juzgado de lo Mercantil de Valencia was not clear, since the applicant had requested the partial revocation of the earlier Spanish trade mark registrations. Therefore, clarification had been requested to the Court. As a consequence, on 7 November 2016 Juzgado de lo Mercantil de Valencia issued a decision (which became part of the judgment of 26 September 2016) clearly stipulating that the earlier marks were revoked for the following goods/services:

Spanish trade mark registration No 2 942 668:

Class 20 – Staircases not included in other Classes.

Spanish trade mark registration No 2 843 608:

Class 6 – Common metals and their alloys; 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; 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;

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;

On 13 February 2017, the applicant submitted copies of documents from the Register of the Spanish Patent and Trade Mark Office, which were communicated to the opponent on 14 February 2017.
By interim decision of 27 March 2017, the Board of Appeal suspended the appeal proceedings in accordance with Rule 20(7)(c) CTMIR. In fact, the earlier EUTM No 127 068 on which the opposition is, inter alia, based was subject to a revocation action (which was assigned No 12 825C) filed before the Cancellation Division of the Office on 14 April 2016 and targeted against Classes 6, 11 and 21, namely goods that could play a crucial role in the comparison with the contested goods.
On 25 April 2017, the Cancellation Division issued a decision (25/04/2017, 12 825 C, práctic (fig)) in revocation proceedings against the earlier EUTM No 127 068 subject to the current appeal proceedings. This decision was not appealed and is final. Therefore, the parties were informed that the present appeal proceedings were resumed.
According to Cancellation Division’s decision No 12 825C, the EUTM proprietor’s [opponent’s] rights in respect of European Union trade mark No 127 068 were revoked (as from 14 April 2016) for part of the contested goods, namely:

Class 6 – Common metals and their alloys; transportable buildings of metal; materials of metal for railway tracks, elevator chains, non-electric cables and wires of common metal; safes; ores of metal and especially staircases and ladders of metal, except step stools of metal;

Class 11 – Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating;

Class 21 – Small utensils and portable containers for household or kitchen use (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; glassware, porcelain and earthenware not included in other classes.

Submissions and arguments of the parties

The arguments raised in the statement of grounds may be summarised as follows:

There is no likelihood of confusion, since the signs are not similar;
The opposition signs are of such low distinctiveness, that it is (almost) only the stylisation of that sign that provides trade mark character;
A conceptual similarity must depend on the extent to which a sign is distanced from a descriptive meaning:

The Spanish earlier rights achieve this by omitting the letters ‘o’ or ‘a’ of práctico/práctica, and by the graphical design;
‘Practixx’ effects this in a conceptually different way by replacing the last consonant by ‘xx’, and omitting the accent above the ‘a’ – as regards the Spanish average consumer, this creates the impression of a word in foreign language or neologism.

There is thus no conceptual difference between the signs – only one of the signs has, from the view of the relevant Spanish public, a clear and specific meaning – the global assessment of the likelihood of confusion implies that conceptual differences between the two signs counteract aural and visual similarities between them (18/12/2008, C-16/06, EU:C:2008:739; MOBILIX / OBELIX, § 98);
As to the aural similarity, this is not at high level:

In the German language ‘ixx’ is especially sonorous (15/09/2009, T‑446/07, Centrixx, EU:T:2009:327, § 48);
In Spanish language ‘x’ is not always sounded as ‘ks’, but also as ‘s’ (e.g. ‘extranjero’), if placed before a consonant. Thus ‘ixx’ would be pronounced [ISKS];
The accented ‘a’ in the earlier rights, places emphasis on this syllable – this is absent from the contested sign.

As to a visual similarity, in the contested decision, the earlier marks are comprised of a figurative element, this has not been taken into account in the global comparison;

Taken together given the lack of conceptual similarity and the low level of distinctiveness of the earlier signs, as part of a global assessment it is concluded that the relevant Spanish consumer would not confuse the signs, even if the goods/services are identical, but the more so, if goods/services are only similar.

The arguments raised in response may be summarised as follows:

The opponent has submitted ample evidence of use of the earlier EUTM No 127 068 for:

Class 6 – Common metals and their alloys; metal building materials; transportable buildings of metal; ironmongery, pipes and tubes of metal; and especially sinks of metal and staircases and ladders of metal;

Class 20 – Installations for heating, steam generating, refrigerating, drying, ventilating, water supply and sanitary purposes;

Class 20 – Stools and ladders;

All the contested goods are identical to the goods covered by the earlier marks;
As to the signs, in the event that the earlier sign ‘práctic’ could be considered as evoking the idea of ‘useful, handy or convenient in use’, it is important to distinguish between a mere evocation of an existing term, which does not identify a good itself, and a descriptive term;
The term ‘práctic’ is not particularly descriptive of the goods and services designated and thus has intrinsic distinctive character, consolidating the dominance of the word element in the overall assessment of the earlier signs;
Therefore, the dominant element of the earlier trade marks is the word ‘Práctic’, as the graphic element is not especially stylized and will be perceived as a decorative element;
The signs at issue are visually similar to a degree above average, to the extent that the contested sign coincides in the first six letters of the earlier marks, these characters being depicted in the same sequence and also sharing the same number of letters and syllables;
Taking into account that the public normally gives more importance to the first part of the words (‘PRACTI-’), which are identical in this case, from a phonetic point of view the signs are also highly similar, i.e. ‘PRAC-TIC’ vs ‘PRAC-TIX’;
Regarding the conceptual comparison, ‘Práctic’ and ‘Practixx’ are conceptually identical as both could be perceived as evoking the same term;
In conclusion, given the identity of goods, the quasi identity in the verbal element in the marks in question (which is in fact the dominant element in both of them), the high degree of visual and phonetic similarity between the signs, the conceptually identity (as they will be understood as evoking the same idea), likelihood of confusion is real and particularly high, since the relevant public, even the highly attentive one, might think the similar goods and services under the marks in conflict come from the same or economically-linked undertakings.

Reasons

All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.
As a transitional measure, Article 80 EUTMDR foresees that the CTMIR and BoA-RoP shall continue to apply to ongoing proceedings until such proceedings are completed, provided that the EUTMDR does not apply in accordance with its Article 82.
As regards the rules applicable for the proof of use of the earlier rights, Article 10 EUTMDR, shall not apply, since the applicantʼs request for proof of use was submitted prior to the date specified in Article 82(2) EUTMDR. Accordingly, the relevant provisions of the CTMIR apply (in particular Rule 22(3) and Rule 40(5) CTMIR).
The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Scope of the appeal

The earlier rights have been limited by the cancellation actions cited above, to the following goods and services (see the effect of Article 62(1) EUTMR):

Earlier TMs	Goods	Registration date
EUTM 127 068	Class 6 – Metal building materials; ironmongery, small items of metal hardware; pipes and tubes of metal; and especially sinks of metal and step stools of metal; Class 11 – Installations for water supply and sanitary purposes.	10 June 1998
Spanish trade mark No 2 843 608	Class 6 – Metal building materials; pipes and tubes of metal; Class 11 – Installations for water supply and sanitary purposes.	14 April 2009
Spanish trade mark No 2 942 668	Class 20 – Stools not included in other classes.	26 January 2011

It is these goods that must be compared to the goods and services of the contested sign. All the earlier registrations protect the identical sign: .

The Board notes that the goods of Spanish trade mark No 2 843 608 are reproduced in the specification of the EUTM, which is wider in extent, also covering (in Class 6) ‘ironmongery, small items of metal hardware; sinks of metal and step stools of metal’. The remaining Spanish trade mark No 2 942 668 specifies the additional ‘stools not included in other classes’ in Class 20.

Request for proof of use

The Board also observes that the applicant, at first instance, requested that the opponent prove use of its earlier rights. This request was not mentioned in the first instance decision, presumably because the requirement to prove use does not apply to the two Spanish trade marks, upon which that decision was based. However, the request is relevant to the appeal as will now be explained.
The applicable law at the time of commencement of this opposition was Article 42(2) and (3) CTMR. This obligates the opponent to show use during the five years preceding the date of publication of the contested sign (24 February 2014), (between 24 February 2009 and 23 February 2014). This is always provided that the earlier right has, at that date, been registered for not less than five years. The two national rights were registered within this period.
In theory, the proof of use request only applies to the earlier EUTM. However, the Board can assume that the findings of the Cancellation Division in respect of the EUTM, in 25/04/2017, 12 825C, práctic (fig), represent an answer to the request, for the following reasons:

The parties in in the case 25/04/2017, 12 825C, práctic (fig) are identical – the cancellation applicant and EUTM proprietor being the applicant and opponent in the present appeal proceedings;
The relevant time period for demonstrating genuine use substantially overlap. In the cancellation decision it is from 14 April 2011 to 13 April 2016 inclusive, and thus the periods coincide in the periods 14 April 2011 to 23 February 2014 – an equivalent period of almost three years;
Though the evidence submitted in the cancelation action is not identical to that submitted in the current matter, an examination of that evidence shows that it comprehensively covers the common time period of time (14 April 2011 to 23 February 2014) – in fact, a significant amount of the evidence in 25/04/2017, 12 825 C, práctic (fig.) is outside the period relevant for the cancellation action, but inside that for the present case (e.g. Item 3a, 3b, 3c and 3d; Item 4; Item 16a and 16b; Items 17, 18 and 19);
Finally, it is salient that neither the cancellation applicant, nor the registered proprietor, challenged the result. The decision has become final.

Thus it may be reasonably inferred that the findings apply equally to the circumstances of the present matter.

Thus, the Board is able to conclude that use has been shown in relation to ‘ironmongery, small items of metal hardware; sinks of metal and step stools of metal’ for the purposes of this case. The other items in the specification of the earlier EUTM are specified by the earlier Spanish trade mark No 2 843 608 for which the proof of use request is inapplicable.

Impact of the revocation actions

The next issue to consider is the goods and services which were refused at first instance. In fact, the vast majority of the contested goods were refused, but for ‘vice benches of metal; and parts thereof, included in Class 6’ – which were found to be dissimilar to the goods of the earlier right. However, this result was based on a wider coverage of goods and services as specified with the earlier rights, now greatly reduced by the revocation actions cited above. It thus behoves the Board of Appeal to reconsider the issue of the similarity of the goods and services in this case, on the basis of the reduced specifications of the earlier rights.
The Board notes that in its observations the opponent states: ‘It must be considered that the above goods and services are IDENTICAL to the goods and services applied in Classes 6, 11, 20 and 35 by the contested sign Practixx’ (emphasis added). The opponent also requests ‘… the Boards of Appeal to dismiss the appeal in its entirety and to confirm the rejection of the EU Trademark application No. 12480521 “Practixx” for all the contested goods and services… ’.
Article 8(3) Rules of Procedure of the Boards of Appeal, (EC) No 216/96, 05/02/1996 – the regime in place at the relevant times – states that in inter partes proceedings ‘… the defendant may, in his or her response, seek a decision annulling or altering the contested decision on a point not raised in the appeal’.
As a consequence, the Board will be comparing the contested mark with all the originally contested goods and services.

Article 8(1)(b) EUTMR

Article 8 EUTMR provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark
applied for shall not be registered:

…

(b) if because of its identity with or similarity to the earlier trade mark and
the identity or similarity of the goods and 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; the likelihood
of confusion includes the likelihood of association with the earlier trade
mark.’

A likelihood of confusion lies in 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17). The risk must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97,Canon, EU:C:1998:442, § 16 and 22/06/1999, C-342/97, Lloyd Schuhfabrik,EU:C:1999:323, § 18).
It is clear from that provision that a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered by the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative (22/01/2009, T-316/07, easyHotel, EU:T:2009:14, § 42).
The likelihood of confusion includes the likelihood of association with the earlier trade mark. In fact, a likelihood of confusion lies in 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 (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).
A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. That 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, § 22-23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

The relevant public

In the assessment of likelihood of confusion, account must be taken of the perception of the trade marks in the mind of the average consumer of goods and services in question, which plays a decisive role in the global appreciation of the likelihood of confusion. In particular, the relevant public is composed of users likely to use both the goods and services covered by the earlier mark and the goods and services covered by the mark applied for (24/05/2011, T-408/09, ancotel, EU:T:2011:241, § 38 and the case-law cited).
The average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect; its level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
In this case, the goods and services at issue include specialist goods (e.g. construction goods) and consumer goods (e.g. garden furniture). The former are not exclusively the purview of professional buyer, but might be of interest to the general public, while the latter certainly are. Thus the level of attention exercised by the relevant public in this case will extend from average to higher than average.

Comparison of the marks

The signs to be compared are:

Practixx

Earlier mark

Contested sign
The relevant territory is the EU and, in particular, Spain.
Visually, the marks are similar. They are identical in respect of their first six letters, and differ only in terms of the appearance of the double ‘x’ in the contested sign, as compared to the single ‘c’, the accent on the letter ‘a’ in the earlier marks, together with its stylisation consisting in the irregular oval shape and a slightly inclined bold font. Having regard to the limited degree of stylisation these latter two features of the earlier marks are not particularly distinguishing and will be perceived as decorative elements.
Aurally, the marks are very similar. As pointed out in the contested decision, the pronunciation of the signs coincides in the sound of the letters ‛P-R-A-C-T-I’ and, although the two final letters of each sign are different ‘C’/’XX’, they are pronounced as ‘K’/‘KS’, the pronunciation will differ only in the final sound ‘S’. This is something of a trivial difference.
Both of the signs, in a number of languages, allude to the concept of ‘practical’, that is ‘handy’ or ‘useful’ – for example pratique (French), práctico (Spanish), practico (Italian), praktický (Czech/Slovak), praktičan (Croatia), praktičen (Slovenia), prakticzny (Poland), практичен (Bulgaria), praktisk (Danish), praktiska (Swedish) and practical (UK/Ireland). The signs are thus conceptually identical for a significant part of the relevant public.
The Board concludes that the signs are highly similar.

Comparison of the goods and services

The goods applied for which are at issue in the present appeal are the goods and services of the application in Classes 6, 11, 20 and 35 that were refused at first instance. The Board will consider these class by class.

Class 6

The contested goods are:

‘Metal building materials’ and ‘pipes and tubes of metal’ and ‘ironmongery, small items of metal hardware’ are clearly identical.
The contested ‘non-electric cables and wires of common metal; … screws, screw nuts and nails’ are all arguably likely to fall under the description of ‘metal building materials’. Even if they are not, as discussed below, they are very similar and, in any event, are covered by the description ‘small items of metal hardware’, which includes screws, screw nuts and nails.
Cables and wires are widely used in the construction industry – for example as tensioning cables in roof and bridge construction, while wire is widely used in fastening and securing components in place (e.g. safety locking wire, used to prevent fasteners from shaking loose and falling out).
Though established as identical to the goods of the earlier right, ‘ironmongery’ is typically used to describe items and tools made from metal and, though the most common examples of this species of good include locks and door handles, they do not exclude hinges and brackets which are building ‘construction’ products, in the wider sense of being part of the components of assembly. There is thus, in addition, some overlap between ‘metal building materials’ and ‘ironmongery’. The same may also be said of ‘small items of metal hardware, including screws, screw nuts and nails’. The Board notes that the earlier mark specifies, in a suffix to the specification that includes all the items contained therein – including ‘metal building materials’ – ‘parts and fitting thereof’ which clearly captures ‘ironmongery, small items of metal hardware, including screws, screw nuts and nails’. In any event, the relevant public may expect these products 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. At the very least, they are highly similar.
There is also similarity between the opponent’s ‘metal building materials’ and ‘transportable buildings of metal’. The latter may well be delivered fully fabricated (e.g. portable cabins), but also in ‘kit’ form, and thus may well fall under the category of metal building materials, for the simple reason such products consists of walls, roofing and structural components that are identical to products that are certainly construction products of metal. It follows that suppliers can be the same. In addition, they share the same nature (metal) and general purpose (being involved in the creation of a structure for shelter of people and/or things). Again, they are, at the very least, similar. Finally, ‘vice benches of metal’ are considered under the goods in Class 20 below.

Contested goods in Class 11

The contested goods are:

The contested ‘apparatus for water supply and sanitary purposes’ are identical in both the specification of the earlier right and that of the contested mark.
For the rest of the goods, the Board finds no similarity. ‘Apparatus for water supply and sanitary purposes’ is a wide description and will include the infrastructure that is installed and maintained by regional water supply companies, but does not exclude more quotidian items such as, for example, valves and regulators and sanitary ware (e.g. toilets). In particular, the Board notes that the earlier right also protects ‘parts for the aforesaid goods (included in Class 11)’, always noting their restriction to purposes of water supply and that of sanitation.
Taking the first category of these goods, that of regional water supply infrastructure, it may be the case that heating, steam generating, cooking, refrigerating, drying, ventilating and air-conditioning apparatus will use water when operating, and that water may be sourced from such water supply apparatus. Nevertheless, the products have a different purpose and are provided by very different commercial operators. In the view of the Board, the comparison here is analogous to that between an electrical appliance (e.g. a washing machine) to the electrical wiring supply in a domestic home – the latter might provide an essential utility for the former to operate, but on most the measures of similarity they are different (nature, purpose, distributors etc.).
It may also be the case that they share certain types of components (e.g. valves in central heating systems, for example), but this is insufficient to declare them similar. The opponent has supplied no evidence to show that the latter items, in terms of their application in apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, outdoor, terrace and party heaters, and air-conditioning are fungible with the parts and fittings that are used in water supply apparatus. These goods are thus found to be different.

Contested goods in Class 20

The contested goods are:

There are a number of descriptions of goods in this class that refer to different types of furniture: ‘Workshop, farm and garden furniture, included in Class 20 … furniture for motor homes; garden furniture; parts for the aforesaid goods’.
In the view of the Board, such wide descriptions cannot fail to include the opponents ‘stools not included in other classes’. These goods are considered to be identical.
The remaining goods that follow are specific and specialised examples of furniture and furniture items, some of which may well be supplied or used with stools – the obvious examples being work benches and work tables (including ‘vice benches of metal from Class 6). Such products are likely to be of the same nature, purpose and be supplied by through the same channels of trade, and are complementary. The Board concludes that these are similar.
There is also similarity between the contested ‘boxes for ironmongery and small items of metal hardware’, given that such storage items relate directly to the ‘ironmongery and small items of metal hardware’ specified in the earlier EUTM right. They are complementary, and likely to be supplied together – and by the sample distributor.
However, the remaining ‘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; parts for the aforesaid goods’ have no obvious affinity with ‘stools’, even if they all fall under the same general category of furniture in the more general sense. The Board concludes that these goods are different to those of the earlier rights.

Contested services in Class 35

The contested goods in this class are:

Turning to Class 35, this now consists of a comparison between the goods of the earlier right(s), and the contested services in this class.
The approach the Board takes in terms of this comparison is set out in 05/07/2017, R 2138/2016-2, GO SOBER FOR OCTOBER / OC october (fig.) et al., § 39-42. The latter pointed out that, insofar as contested retail services in Class 35 relate to goods which are to be considered identical, the contested services can be offered in the same places as those in which the earlier goods are sold. Furthermore, there is a complementary nature between the services and the goods in the sense that the goods are indispensable for the provision of those services, which are specifically provided when these goods are sold. Such services, which are provided with the aim of selling certain specific goods, would make no sense without those goods (24/09/2008, T-116/06, O Store, EU:T:2008:399, § 48-57; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 39-44; 13/11/2014, T-549/10, Natur, EU:T:2014:949 § 36; 15/07/2015, T-352/14, HAPPY TIME / HAPPY HOURS, EU:T:2015:491, § 26-32). The Board thus concludes that, in light of the foregoing, the contested retail services in Class 35 for the following goods are similar to an average degree (at least) to the goods of the earlier right:

Class 6 – Metal building materials; pipes and tubes of metal; and parts thereof, included in Class 6;

Class 11 – Apparatus for water supply and sanitary purposes … parts for the aforesaid goods (included in Class 11);

Class 20 – Workshop, farm and garden furniture, included in Class 20; furniture for motor homes; garden furniture; parts for the aforesaid goods (included in Class 20).

Particularly in the building industry, products may be sourced directly from the manufacturer, while ‘apparatus for water supply and sanitary purposes’ may be sourced from general building and hardware supply stores, which does not exclude ‘own brand’ products. There is a clear reference point here in that the relevant public is likely to perceive the goods or services concerned as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38) – consumers will consider it normal that the goods or services are marketed under the same trade mark.
The Board thus finds a similarity between the contested retail services listed below and the earlier goods of the opponent:

Retailing, in particular via the Internet, in the fields of: 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, boxes for ironmongery and small items of metal hardware, construction articles, apparatus for water supply and sanitary purposes, work benches, work tables, camping furniture, garden furniture.

No distinction is made, here, between physical retail in a traditional store and that over the internet, given that sales of all the above products are now routinely purchased from both sources.
It is also the case that retail services do not necessarily have to consist of identical products in order to find a similarity (24/09/2008, T-116/6, O Store, EU:T:2008:399, § 85, 87; 09/06/2010, T-138/09, Riojavina, EU:T:2010:226, § 43 as well as e.g. 11/05/2016, R 1938/2015-2, HUMAN SKULL (fig.) / CHEAP MONDAY ÖVER MIN DÖDA KROPP (fig.) et al. § 25 et seq.; 05/06/2017, R 1341/2016, LA ESPAÑOLA (fig.) / LA ESPAÑOLA (fig.) et al § 18-21).
In particular, the Court found in 09/06/2010, T-138/09, Riojavina, EU:T:2010:226, § 43 that marketing services expressly described as ‘relating to vinegars’ – namely ‘sole agencies, representation services, wholesaling, retailing, export, import; all the aforesaid relating to vinegars’, in Class 35 – and, on the other hand, wine, were similar, albeit to a low degree.
The services of retail (including via the internet) in relation to the following goods remain to be considered:

‘…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 … 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 … 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 … air-conditioning apparatus … tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools, … tool boxes of plastic with or without parts of wood and/or metal.’

Any finding as to similarity of the services of retail of any of the following goods can be quickly dismissed, given that they share no similarity with the goods of the opponent:

‘…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 … 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 … 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 … air-conditioning apparatus … tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools … tool boxes of plastic with or without parts of wood and/or metal, boxes for ironmongery and small items of metal hardware’.

There may be some similarity between ‘DIY articles’ and the construction goods of the opponent, while retail of ‘garden articles’ will include garden furniture and thus the ‘stools’ of the earlier rights, including ‘vice benches of metal’. ‘Flexible pipes’ are unlikely to be made of metal, but may well share the same purpose, while distribution channels for these goods coincide and their sales outlets or the retail stores they are sold in are often either the same or at least closely connected. Such products will be fungible with ‘pipes and tubes of metal’. The Board concludes that these goods and services are similar, if not to a profound degree.

Distinctiveness of the earlier marks

In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking.
Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods [services] for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22-23).
As such, the distinctive character of a trade mark can be appraised only, firstly by reference to the goods or services in respect of which registration is sought and, secondly, by reference to the way it is perceived by the relevant public.
The opponent did not explicitly claim that its earlier marks are 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.
Since the verbal element of the earlier marks will be perceived by the relevant public as alluding to a practical aspect of the goods and services in question – and the distinguishing capacity of the figurative elements in the earlier marks is fairly limited, the Board considers that the Opposition Division did not err in finding that distinctiveness of the earlier marks is lower than normal.

Overall assessment of the likelihood of confusion

As pointed out in the contested decision, the signs are visually identical to the extent that they coincide in six letters, ‘PRACTI-’, with relatively minor differentiating features, indeed, the figurative element and graphical representation of the letters of the earlier marks are not particularly elaborate. Aurally, the signs are very close as they differ in only one final sound. The applicant’s contention in submissions that in Spanish the ‘ixx’ of the contested sign would be pronounced [ISKS] is not convincing, and even if, in the German language, ‘ixx’ is especially sonorous, this is only one EU language (there are many others) and none of this alters the observation that the first six letters of the marks are shared, and will dominate pronunciation in any language.
Next, ‘Practixx’ – despite the last consonant ‘xx’, and the lack of the accent above the ‘a’ (as pointed out by the applicant) – would clearly still retain an allusion to ‘practical’ for the Spanish average consumer. Conceptually, the signs are identical for a significant part of the relevant, consuming public.
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’ (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited therein, 13/09/2010, T-72/08, smartWings, EU:T:2010:395, § 45; 10/07/2012, T-135/11, Cloralex, EU:T:2012:356, § 35-37 ‒ confirmed in 30/01/2014, C-422/12 P, Cloralex, EU:C:2014:57, § 43-45; and 27/02/2014, T-25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).
Furthermore, when dealing with the distinctiveness of the earlier mark as a whole, the latter must be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’ (23/04/2013, T-109/11, Endurace,
EU:T:2013:211, § 28 and the case-law cited). Therefore, in such opposition proceedings, it is not possible to find that the earlier mark is exclusively descriptive or entirely devoid of distinctive character. Even if the Office has to verify the way the public perceives the sign and evaluate its distinctive character, this verification may not culminate in a finding of lack of distinctive character of the earlier mark (see, by analogy, as regards earlier national trade marks, 24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 41-44). Therefore, the earlier mark must be deemed to have, at least, a minimum degree of distinctiveness.
The Board takes account 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). The Board notes that even those consumers with a higher than average degree of attention will still be subject to the imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The marks in conflict share an above average degree of similarity and the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (see judgment of 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
As a consequence, the Board finds that there is confusion between the signs in relation to the goods and services that have been found to be identical and similar to varying degrees.

Costs

Pursuant to Article 109(3) EUTMR, where each party succeeds on some and fails on other heads, the Boards of Appeal shall decide a different apportionment of costs. As the appeal is successful in part, it is appropriate to order that each party bears its own costs in the appeal proceedings.
As to the costs of the opposition proceedings, the contested decision ordered that each party bears its own costs. These findings are not altered by the present decision.

Order

On those grounds,

THE BOARD

hereby:

Annuls the contested decision to the extent that application was rejected for the following goods and services:

Class 11 – Heating, steam generating, cooking, refrigerating, drying, ventilating, in particular outdoor, terrace and party heaters, and air-conditioning apparatus; parts for the aforesaid goods (included in Class 11);

Class 20 – Tool cabinets, racks (furniture), jacks, saw horses, holders for storing tyres and tools, tool boxes of plastic with or without parts of wood and/or metal;

Rejects the opposition in respect of the above goods and services;
Upholds the Opposition Division decision for the remainder;

Orders each party to bear their own costs in the opposition and appeal proceedings.

Signed

G. Humphreys

Signed

A. Kralik

Signed

C. Govers

Registrar:

Signed

p.o. P. Nafz

11/11/2019, R 370/2016-5, Practixx / práctic (fig.) et al.

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Summary of the facts

Submissions and arguments of the parties

Reasons

Scope of the appeal

Comparison of the marks

Comparison of the goods and services

Contested goods in Class 11

Contested goods in Class 20

Contested services in Class 35

Distinctiveness of the earlier marks

Overall assessment of the likelihood of confusion

Costs

Order

Annuls the contested decision to the extent that application was rejected for the following goods and services:

Rejects the opposition in respect of the above goods and services;

Upholds the Opposition Division decision for the remainder;

Orders each party to bear their own costs in the opposition and appeal proceedings.

Latest News