OPPOSITION No B 2 454 794

Virag S.R.L, Via della Moscova, 46/9, 20121 Milano, Italy (opponent), represented by Dott. Franco Cicogna & C.SRL, Via Visconti di Modrone, 14/A, 20122 Milano, Italy

(professional representative)

a g a i n s t

Cemex Research Group AG, Römerstr. 13, 2555 Brügg bei Biel, Switzerland (applicant), represented by Clarke Modet & Co., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).

On 04/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 454 794 is partially upheld, namely for the following contested goods:

Class 19: Building materials (non-metallic), namely cement, concrete, screed, stone, lime, gravel, gypsum, floor tiles, partitioning, bricks; asphalt, pitch and bitumen; non-metallic transportable buildings, namely modules, panels, precast columns and monuments, not of metal, all the aforesaid not including laminated flooring, floor tiles (not of metal), resilient or vinyl flooring (non-metallic), resilient or vinyl wall coverings (non-metallic), parquet flooring; parquet floor boards.

2. Community trade mark application No 13 238 721 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 238 721. The opposition is based on Community trade mark registrations No 6 819 791, No 2 533 230 (registered for laminated flooring; floor tiles, not of metal; floors (not of metal); resilient or vinyl flooring (non-metallic); resilient or vinyl wall coverings (non-metallic); parquet flooring; parquet floor boards in Class 19 and floor coverings; insulating floor coverings; linoleum in Class 27), and No 9 797 879 (registered for thermal insulating or soundproofing materials for ceilings, walls and floors; Expanded polystyrene and other materials for use in the insulation of walls, ceilings and floors of buildings; Elastomeric sealants for use in tiling or with tiles or in plugging and filling joints and gaps; Flexible sealing and jointing compounds for use in tiling, or for use in mounting and /or fixing materials onto walls, floors and other surfaces; Insulating tiles, not of metal; Gutta-percha; Caoutchouc, balata and substitutes; Goods made of gutta-percha and of rubber; Foils; Sheets and rods of plastics; Mica and mica products; Packing, stopping and insulating materials; Flexible pipes not of metal; Electric, thermal and acoustic insulators; Insulating fabrics in Class 17; floors and tiles (non-metallic), building tiles, not of metal; Vinyl flooring; Floors (not of metal); Floor coverings, parquet flooring, laminated flooring, laminated floorboards and profile strips for floor coverings, all made from coated and uncoated boards, of wood, wood materials and recycled wood substitute materials; Ceramic, earthenware, enamel, clay, and wood floor, wall and ceiling tiles; Building materials; Natural and artificial stone; Bricks; Tiles, roof tiles; Cement; Lime; Mortar; Plaster and gravel; Earthenware and cement tubes; Road building materials; Asphalt; Pitch and bitumen; Mobile homes; Monuments of stone; Chimneys; Semi-worked timber; Building timber; Beams; Planks; Panels; Plywood; Building glass; Sheets of glass; Tiles of glass in Class 19 and Carpets, rugs, mats and matting, linoleum; Materials for covering floors; Wall hangings (non-textile); Wallpapers; Goods for covering walls; Oilcloth in Class 27). The opponent invoked Article 8(1)(a) and (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 Community trade mark registration No 6 819 791 .

1. The goods and services

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

Class 17: Gutta-percha; caoutchouc, balata and substitutes; goods made of gutta-percha and of rubber; films; sheets and rods of plastics; mica and mica products; packing, stopping and insulating materials; flexible pipes, not of metal; electric, thermal and acoustic insulators; insulating fabrics.

Class 19: Acoustic vinyl floorings; floors (not of metal); floor coverings, parquet flooring, laminated flooring, mouldings for floor coverings, products made of covered and non-covered panels, of wood, wood materials and recycled wood substitute materials; ceramic, earthenware, enamel, clay, and wood floor, wall and ceiling tiles; building materials; natural and artificial stone; bricks; tiles, roof tiles; cement; lime; mortar; plaster and gravel; earthenware and cement tubes; road building materials; asphalt; pitch and bitumen; mobile homes; monuments of stone; chimneys; semi-worked timber; building timber; beams; planks; panels; plywood; building glass; sheets of glass; tiles of glass.

After limitation filed by the applicant on 05/08/2015 and confirmed on 28/08/2015, the contested goods and services are the following:

Class 19: Building materials (non-metallic), namely cement, concrete, screed, stone, lime, gravel, gypsum, floor tiles, partitioning, bricks; asphalt, pitch and bitumen; non-metallic transportable buildings, namely modules, panels, precast columns and monuments, not of metal, all the aforesaid not including laminated flooring, floor tiles (not of metal), resilient or vinyl flooring (non-metallic), resilient or vinyl wall coverings (non-metallic), parquet flooring; parquet floor boards.

Class 37: Construction and repair of buildings; consultancy relating to building construction and to the use of materials for building construction (consultancy or information relating to building construction); road paving, installation of floors and benches; demolition and bricklaying, plastering; remodelling of buildings.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 19

The contested cement, concrete, screed, stone, lime, gravel, gypsum, floor tiles, partitioning, bricks; asphalt, pitch and bitumen all the aforesaid not including laminated flooring, floor tiles (not of metal), resilient or vinyl flooring (non-metallic), resilient or vinyl wall coverings (non-metallic), parquet flooring; parquet floor boards are included, in spite of the limitation made by the applicant, in the broader category of building materials protected by the earlier mark and, therefore, these goods are identical.

The goods modules, panels, precast columns and monuments, not of metal, all the aforesaid not including laminated flooring, floor tiles (not of metal), resilient or vinyl flooring (non-metallic), resilient or vinyl wall coverings (non-metallic), parquet flooring; parquet floor boards overlap with the opponent’s products made of wood, wood materials and recycled wood substitute materials of the earlier mark, because they are all not metallic goods and furthermore, the contested goods may be easily made of wood, wood materials and recycled wood substitute materials. They are, thus, identical.

Contested services in Class 37

The contested construction and repair of buildings; consultancy relating to building construction and to the use of materials for building construction (consultancy or information relating to building construction); road paving, installation of floors and benches; demolition and bricklaying, plastering; remodelling of buildings, are not similar to the opponent’s goods. Although it is certain that when providing construction and repair services, or providing other installation services the provider indeed uses various materials, such as the opponent’s goods in Classes 17 and 19, it is not customary in trade that construction companies are engaged in the manufacturing of the specific goods used in the construction process. It is generally known that the materials used in ‘building construction’ and in connection with ‘repair’ and ‘installation’ services have a completely different origin from the services. Therefore, these services are considered dissimilar to all the opponent’s goods.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is composed of a figurative element representing a grey leaning quadrangle with a white leaning letter ‘e’ on it (for the part of the public that perceives the letter in it). This figurative element is followed by a verbal element, ‘evolutionvelox’, written jointly in lower case, slightly sloped letters in bold, partly in grey and partly in black. The contested sign is a figurative sign composed of two verbal elements ‘evolution eco’, written separately in lower case slightly sloped letters, partly in black and partly in grey on a clear background. There are also two short curves placed below the letter ‘e’ in the word ‘evolution’.

Visually, the signs are similar to the extent that they coincide in the word ‘evolution’ which is common to the signs. They differ in their figurative elements, including their colouring and the graphical representation, and in the remaining verbal parts of the signs, namely ‘velox’ in the earlier mark and ‘eco’ in the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters composing the word ‛evolution’ present in the signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters composing the element ‘velox’ being the remaining part of the earlier mark and the additional word ‘eco’ of the contested sign. For the part of the public that will perceive the letter ‘e’ in a figurative element present in the earlier mark the pronunciation of the signs will also differ in the sound of this letter.

Conceptually, a relevant part of the public in the relevant territory will perceive the common word ‘evolution’ as referring to a gradual development (progress, advancement). This element will not only be understood by the part of the public that speaks English but also by the majority of the relevant public due to the existence of its identical or similar equivalents in other languages of the EU (for example ‘évolution’ in French, ‘evolución’ in Spanish, ‘evoluzione’ in Italian, ‘evolucija’ in Croatian, ‘evolutje’ in Romanian, ‘ewolucja’ in Polish, ‘evolution’ in Danish and Swedish, ‘evoluutio’ in Finnish, ‘evoliucija’ in Lithuanian). To this extent the signs are conceptually similar. The remaining part of the earlier mark, ‘velox’, does not have any concrete meaning in the relevant languages, though in some, for example Spanish, consumers might call to mind the word “veloz”, which means “fast”. When consumers perceive the figurative element at the beginning of the sign in the earlier mark as a letter “e” they might connect it with the verbal element ‘evolution’, placed next to it.

The additional verbal element ‘eco’ of the contested sign will be recognised by consumers in the relevant territory as a short form of the English adjective ‘ecological’ meaning a practice tending to benefit or cause minimal change to the environment, because this form exists in most of the EU languages.

Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are 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 dominant (visually eye‑catching) than other elements.

The earlier mark has no elements that could be clearly considered more distinctive than other elements.

The element ‘eco’ of the contested sign will be associated by the majority of the public with a practice tending to benefit or cause minimal change to the environment. Taking into account the relevant goods in Class 19, it is considered that this element is weak for all them, as a reference to a desirable quality.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge and expertise. The degree of attention may vary from average to higher than average, depending on the type, price and frequency of purchase of the particular products.

6. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly dissimilar.

The earlier mark has, as a whole, an average degree of distinctiveness.

The signs are similar from visual, aural and conceptual point of view because they share the common and distinctive element ‘evolution’. Furthermore, this common element constitutes the first verbal elements of the signs in question. This is particularly relevant, because consumers generally tend to focus on the beginning of a sign when confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the initial part the one that first catches the attention of the reader.

The differences between the signs lie in their figurative elements and their additional verbal elements. In this context, it has to be mentioned that, where a trade mark is composed of verbal and figurative elements; the former usually has a stronger impact on the consumer than the latter, because the average consumer will more easily refer to a mark by its verbal element than by describing its figurative element.

The additional verbal elements present in both signs have only a limited influence on the likelihood of confusion between them. The element ‘eco’ of the contested sign has been found weak in relation to the goods at issue. The element ‘velox’ of the earlier mark will not divert the attention of the public from the overall similar impression between the signs caused by the coinciding term ‘evolution’, especially in languages where it is not associated with any concept.

The Opposition Division is of the opinion that the visual, aural and conceptual similarities caused by the coinciding element ‘evolution’ outweigh the differences between the marks under comparison, and may induce consumers to believe that the contested goods, that are identical to those of the opponent, come from the same undertaking or from the economically-linked undertakings. Due to the coincidence in the distinctive verbal element ‘evolution’ of the marks, even highly attentive consumers may believe that the contested sign represents a special version of the goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion between the signs in question and, therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 6 819 791.

The rest of the contested services 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 services cannot be successful.

The other earlier rights invoked by the opponent, namely Community trade mark registration No 9 797 879 , registered for goods in Classes 17, 19 and 27 is less similar to the contested mark, because it is composed of further figurative and verbal elements which are not present in the contested trade mark. Moreover, they cover the same or similar scope of the goods in Classes 17 and 19, and as for Class 27 the goods are still dissimilar to the services in Class 37 for which the opposition has already been rejected because it is not customary in trade that the origin of these services is the same as that of the goods, and though the goods can be used together with the services, they are not complementary stricto sensu.

The earlier Community trade mark registration No 2 533 230 ‘EVOLUTION’ covers a narrower scope of goods in Class 19 than the earlier right which has been compared above and the goods in Class 27 are different to the applied services in Class 37 for the reasons provided in the paragraph above. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) CTMR because the signs and the goods and services are obviously not identical.

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

Francesca CANGERI SERRANO

Eamonn KELLY

Maria Belén IBARRA DE DIEGO

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.