OPPOSITION No B 2 986 241

Duratex S/A, Av. Paulista, 1938 - 5° Andar, Sao Paulo, Brazil (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Widenmayerstraße 47, 80538, München, Germany (professional representative)

a g a i n s t

Interfloor Limited, Broadway Haslingden, BB4 4LS Rossendale, United Kingdom (applicant), represented by Alt-Legal Limited T/A Alpaca, Platform Suite 5B New Station Street, LS1 4JB Leeds, United Kingdom (professional representative).

On 19/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 986 241 is upheld for all the contested goods.

2. European Union trade mark application No 17 097 122 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 097 122 for the word mark ‘DURATEX’. The opposition is based on

European Union trade mark registration No 11 615 838 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

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

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

Class 11: Regulating and safety accessories for water apparatus; bath fittings; water heating installations; regulating accessories for water or gas apparatus and pipes; safety accessories for water or gas apparatus and pipes; drinking water (filters for -); water flushing installations; water heaters; water heaters [apparatus]; heating apparatus; heating apparatus, electric; filaments, electric (heating -); heating installations; heating installations [water]; washers for water taps; toilet seats; toilet bowls; bath installations; fittings (bath -); bidets; flushing tanks; pipes [parts of sanitary installations]; water conduits installations; water pipes for sanitary installations; showers; water flushing installations; water distribution (installations for -); heating elements; water intake apparatus; heating filaments, electric; water filtering apparatus; filters [parts of household or industrial installations]; filters for drinking water; water supply installations; wash hand basin [parts of sanitary installations]; sink [parts of sanitary installations]; sinks; water purifying apparatus and machines; water purification (installations for -); sanitary apparatus and installations; seats (toilet -); taps [faucets]; toilets (water closet); mixer taps for water pipes; urinals [sanitary fixtures]; water closet.

Class 19: Tiles not of metal, for building; plywood; timber (building -); panels (building -) not of metal; linings not of metal, for building; partitions, not of metal; framework not of metal, for building; plywood sheets; furrings of wood; wainscotting, not of metal; wood paving; plywood (sheets of- ); timber (manufactured -); veneer wood; building timber; building panels, not of metal; floors, not of metal; floors, not of metal, for building; wood veneers; wall linings, not of metal, for building; boards; floorboards; all aforementioned goods not in the field of passive fire Protection and high performance thermal insulation; none of the aforementioned goods in this class made of concrete.

The contested goods are the following:

Class 19: Flooring underlay.

Class 27: Carpet underlay.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 flooring underlay refers to a thin  layer of cushioning made of materials such as sponge rubber, foam, felt, or crumb rubber; this material is laid, inter alia, on the raw floor (concrete floor) to provide insulation against sound, moisture, and cold/heat. These goods overlap with the opponent’s floors, not of metal, for building; all aforementioned goods not in the field of passive fire Protection and high performance thermal insulation; none of the aforementioned goods in this class made of concrete in Class 19. It follows that they are identical.

Contested goods in Class 27

The contested carpet underlay, by analogy to the previously compared goods, also refers to a layer of cushioning made of materials such as sponge rubber, foam, felt, or crumb rubber placed between a carpet and the floor to protect the carpet and make it feel warmer and softer. These goods are similar to the opponent’s floors, not of metal, for building; all aforementioned goods not in the field of passive fire Protection and high performance thermal insulation; none of the aforementioned goods in this class made of concrete in Class 19. They share the same purpose and they may coincide in the relevant public, distribution channels and producers.

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 goods found to be identical and similar are directed at the public at large and at the professional public with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised/sophisticated nature, or terms and conditions of the goods purchased.

3. The signs

	DURATEX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The 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, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the sign on the Polish-speaking part of the public, for which the signs in their entirety are meaningless because in relation to this part of the public the likelihood of confusion will be higher.

The earlier mark is a figurative mark, composed of the verbal element ‘duratex’, written in lowercase letters in fanciful script in black, followed by a figurative element depicted in black.

The contested sign is a word mark ‘DURATEX’. In the word marks, it is the word as such that is protected and not its written form. Additionally, for the same reasons, the contested sign has no elements that could be considered more dominant (visually eye-catching) than other elements.

The verbal elements present in both signs do not convey any meaning for the relevant public and, therefore, their inherent distinctiveness will be average in relation to the goods in question in the relevant territory.

As regards the figurative elements of the earlier mark (the figurative device and stylisation of the letters) account must be taken that when signs consist of both verbal and figurative components, in principle, the verbal component of the signs usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, in view of the composition of the earlier mark, the verbal element is the one that will be used to refer to it.

Additionally, the Opposition Division observes that the figurative element present in the earlier mark is essentially ornamental and therefore, weaker as an indicator of commercial origin. The verbal element of the earlier mark ‘DURATEX’ is the most distinctive element of the sign, as it will be perceived as the badge of origin of the respective goods.

The earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters constituting the element ‘DURATEX’, which is the only verbal element of the earlier mark and it is fully reproduced in the contested sign. The differences between the signs are limited to the decorative figurative element and stylisation of the earlier mark, which are less distinctive than the verbal element of the sign. Their impact will be rather minor in comparison to the coincidence in the identical and more distinctive verbal element ‘DURATEX’.

Consequently, considering all the above, there is a high degree of visual similarity between the signs.

Aurally, the signs are identical. The figurative components of the earlier mark do not play a role in the aural comparison.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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, despite the presence of some weaker elements in the mark (its figurative components), as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The contested goods are identical and similar to the opponent’s ones.

The earlier mark is distinctive to an average degree.

Visually, the signs are similar to a high degree and aurally, they are identical. The additional differentiating elements present in the signs refer to purely figurative elements present in the earlier mark (a device and the slight stylisation of its verbal element), which will catch less attention of the public than the verbal element ‘DURATEX’. Additionally, the signs do not convey any meaning that would help the consumers to distinguish them.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54.

Considering all the above, and, in particular, a high degree of visual similarity and the aural identity between the signs, which contributes strongly to their overall similar impression together with the identical and similar goods, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 615 838. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Monika CISZEWSKA

Liliya YORDANOVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.