OPPOSITION No B 2 527 045

Zagope Sgps S.A., Lagoas Park Ed. 6 Piso 1, 2740-244 Porto Salvo, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores LDA, Rua Castilho, 167, 2º andar, 1070-050 Lisbon, Portugal (professional representative)

a g a i n s t

Wilhelm Maass GmbH, Zeche Ernestine 18, 45141 Essen, Germany (applicant), represented by Jones Day, Prinzregentenstr. 11, 80538 Munich, Germany (professional representative).

On 02/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 527 045 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 707 914. The opposition is based on Portuguese trade mark registration No 540 331. 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.

1. The goods and services

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

Class 35: Information services relating to business management services applied to construction projects; consulting services for business management services applied to construction projects; advisory services for business management applied to construction projects; business management services for construction projects.

Class 37: Roofing services; information services relating to information applied to construction; consulting services relating to information applied to construction; advisory services relating to information applied to construction; construction information services; consulting services relating to building construction; advisory services relating to building construction; construction building services; information services relating to civil building construction supervision; consulting services relating to civil building construction supervision; advisory services relating to civil building construction supervision; civil building construction supervision services; factory construction; harbour construction; information services relating to consulting services in civil building construction area; consulting services relating to construction information in civil building construction area; advisory services relating to construction information in civil building construction area; construction information provided in building construction area; information services relating repairing information; consulting services relating repairing information; advisory services relating to information on repairing services; information services on repairing services; information services on irrigation devices installation and repair; consulting services on irrigation devices installation and repair; advisory services provided on irrigation devices installation and repair; providing services on irrigation devices installation and repair; information services relating to scaffolding; consulting services relating to scaffolding; advisory services relating to scaffolding; scaffolding services; information services relating to advisory, consulting and information on building construction; consulting services relating to advisory, consulting and information on construction; advisory services relating to advisory, consulting and information on construction; advisory, consulting and information services on construction; information services relating to advisory, consulting and information applied to sewerage installations maintenance; consulting services relating to advisory, consulting and information applied to sewerage installations maintenance; advisory services relating to advisory, consulting and information applied to sewerage installations maintenance; advisory, consulting and information services provided in sewerage installations maintenance; information services relating to advisory, consulting and information on coating services; consulting services relating to advisory, consulting and information on coating services; advisory services relating to advisory, consulting and information on coating services; advisory, consulting and information provided on coating services; information services relating to advisory, consulting and information on building construction supervision; consulting services relating to advisory, consulting and information on building construction supervision; advisory services relating to advisory, consulting and information on building construction supervision; advisory, consulting and information services provided on building construction supervision ;information services relating to advisory, consultancy and information on land structure building; consulting services relating to advisory, consultancy and information on land structure building; advisory services relating to advisory, consultancy and information on land structure building; advisory, consulting and information services provided on land structure building; sport camp maintenance; information services relating to civil construction building and repair; consulting services relating to civil construction building and repair; advisory services relating to civil construction building and repair; civil construction building and repairing service; information services relating to sewerage system cleaning, repair and maintenance; consulting services relating to sewerage system cleaning, repair and maintenance; advisory services relating to sewerage system cleaning, repair and maintenance; sewerage system cleaning, repair and maintenance services; architectural modelling (prototype building, architectural models, miniature applied to architectural projects and property development, according to the project); information services relating to ground drilling; consulting services relating to ground drilling; advisory services relating to ground drilling; ground drilling services; ornament repairing and maintenance (maintenance and repairing services); information services relating to earthmoving; consulting services relating to earthmoving; advisory services relating to earthmoving; earthmoving services; information services relating to energy transmitting wire repair; consulting services relating to energy transmitting wire repair; advisory services relating to energy transmitting wire repair; repairing services relating to energy transmitting wire repair.

Class 42: Architecture services; information services relating to engineering sector; consulting services relating to engineering sector; advisory services relating to engineering sector; engineering services; information services relating to civil engineering projects; consulting services relating to civil engineering projects; advisory services relating to civil engineering projects; engineering project services; civil engineering projects services; engineering and planning services provided in communication and information networks sector/field; information services relating to soil and subsoil analysis; consulting services relating to soil and subsoil analysis; advisory services relating to soil and subsoil analysis; soil and subsoil analysis services.

The contested goods and services are the following:

Class 6: Building and construction materials and elements of metal; unprocessed and semi-processed materials of metal, not specified for use; goods of metal, namely forged parts, flanges and collars, rings, pipe bottoms, connections, fittings, pipe elbows and tubes of stainless steel, spectacle blinds and blanking discs, reducers, caps, tee-connectors, round steel, valve balls; doors, gates, windows and window coverings of metal; structures and transportable buildings of metal; statues and works of art of common metals; containers, and transportation and packaging articles, of metal; parts and accessories for all the aforesaid goods, included in this class.

Class 40: Treatment and conversion of materials, namely metal treating, in particular forging, pressing, laminating, welding, punching, shaping, cutting, drilling, millworking, machining.

Class 42: Testing, authentication and quality control, in particular material testing.

Although the goods and services in question are not identical, some of the contested services are similar to those of the opponent. For instance, the contested quality control, in Class 42, is similar to the opponent’s engineering services in the same class. This is because engineering refers to the development and modification of goods in very specialised fields using specialised knowledge or skills, and such goods must be subject to quality control, which requires the same specialised skills. Therefore, these services could be provided by the same undertakings, through the same channels, and could target the same public. They are also connected as regards their natures. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were similar to those of the earlier mark.

2. 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 services and most of the goods at issue are intended for business professionals. However, it cannot be excluded that some of the building materials in Class 6 may also be purchased by the general public. The degree of attention is expected to be average in relation to, for instance, rings and tee-connectors, which are relatively inexpensive goods that are frequently substituted, whereas it may be higher in relation to goods that are more expensive and not frequently replaced such as transportable buildings of metal as well as in relation to most of the services, such as building which is usually a costly service, or quality control which is a crucial step in a product’s manufacturing cycle.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of a black rectangular background on which verbal elements are written in white. The background is divided into two areas by a white vertical line. The square-shaped area on the left-hand side contains the letters ‘AG’ in relatively large upper case letters. These two letters partially overlap to the extent that the right-hand bar of the ‘A’ also forms the rounded left part of the’ G’. The rectangle-shaped area on the right-hand side contains the words ‘ANDRADE’, at the top, and ‘GUTIERREZ’, underneath, which are written in standard upper case white letters.

The contested sign is a figurative mark consisting of a relatively large letter ‘A’ depicted within a circular shape. It may also be perceived as a letter ‘A’ superimposed on a letter ‘G’, or the other way round.

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

Visually, the signs differ in the verbal elements ‘ANDRADE GUTIERREZ’ and the black background shapes of the earlier mark. Furthermore, although part of the public may perceive the letters ‘A’ and ‘G’ in both signs, this does not lead to any visual similarities between them because the depiction of these letters is very different. In the contested sign the letters ‘A’ and ‘G’ are depicted in black and one is superimposed on the other, whereas in the earlier mark these two letters are placed side by side and portrayed in white. As a consequence, irrespective of whether or not the letters ‘A’ and ‘G’ are perceived in the contested sign, the marks are not visually similar.

Aurally, part of the public will perceive the letters ‘AG’ of the earlier mark as the initials of ‘ANDRADE GUTIERREZ’ and will, therefore, refer to the mark by only the words in full, and will overlook the initials ‘AG’ placed before these words. However, it cannot be excluded that part of the public will pronounce these initials as they are very visible due to their position at the beginning of the mark, their size and their particular depiction, which, although stylised, will allow them to be recognised immediately.

For the part of the public that perceives the letters ‘A’ and ‘G’ in the contested sign, and pronounces them in this order, and also pronounces the letters ‘AG’ of the earlier mark, the signs coincide to that extent. However, they differ in the pronunciation of the verbal elements ‘ANDRADE GUTIERREZ’ of the earlier mark and are, therefore, considered to be similar to a low degree. Only a very low degree of similarity exists if the initials ‘AG’ are pronounced in the earlier mark and the contested sign is pronounced as ‘GA’.

For the part of the public that refers to the earlier mark by only the full verbal elements ‘ANDRADE GUTIERREZ’, and does not pronounce the letters ‘AG’, the signs are not aurally similar, irrespective of whether the contested sign is pronounced as ‘A’, ‘AG’ or ‘GA’ (the coincidence in only the sound of the letter ‘A’ of the contested sign and the ‘A’ at the beginning of the word ‘ANDRADE’ of the earlier mark would go unnoticed).

For the part of the public that perceives the contested sign as only a stylised letter ‘A’, the signs coincide in, at most, the sound of this letter, whereas they differ in the remaining elements of the earlier mark and are, therefore, to be considered as not similar.

Conceptually, the public in the relevant territory will perceive the two words ‘ANDRADE’ and ‘GUTIERREZ’ of the earlier sign as two surnames, and the letters ‘AG’ as the initials of these surnames. If the contested mark is perceived as just a stylised letter ‘A’, it will convey the concept of that letter. If it is perceived as two superimposed letters, it will not be associated with any concept because both ‘AG’ and ‘GA’ lack a clear and unambiguous semantic content, particularly in the context of the goods and services at issue.

In view of the above, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 services 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. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (20/09/1998, C‑39/97, ‘Canon’, EU:C:1998:442, § 17 et seq.).

The goods and services are assumed to be similar and the degree of attention of the public will be average for some goods and higher than average for others. The earlier mark is of average distinctiveness.

The signs are not similar visually or conceptually. They only coincide aurally, and only for part of the public, in the sound of the letters ‘A’ and ‘G’, while they differ in the pronunciation of the earlier mark’s verbal element ‘ANDRADE GUTIERREZ’; therefore, the aural similarity is of a low degree for that part of the public. In fact, the earlier mark includes additional verbal elements that will undoubtedly be noticed by the public and that may even be the only elements pronounced (in which case the signs are not even aurally similar), since the letters will be perceived as the initials of the other verbal elements.

According to the Opposition Division, the elements that differentiate the signs combined with the low degree of similarity between them (which concerns only part of the public, only the aural perspective) lead to the conclusion that there is no likelihood of confusion between the signs, even assuming that the goods and services are similar, irrespective of the degree of attention.

Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Alexandra APOSTOLAKIS

Catherine MEDINA

Solveiga BIEZA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.