OPPOSITION No B 3 053 500

Irpen, S.A., Gran Via de les Corts Catalanes, 814, 08013 Barcelona, Spain (opponent), represented by Durán - Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Polimark, Via Bainsizza 5, 20812 Limbiate, Italy (applicant), represented by Andrea Giussani, Via Filippo Corridoni 40, 20122 Milano, Italy (professional representative).

On 21/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 053 500 is partially upheld, namely for the following contested goods:

Class 17: Acrylic resins, semi-processed; plastic fibres, other than for textile use; elastic yarns, other than for textile use; threads of plastic materials, other than for textile use; filtering materials [semi-processed foams or films of plastic]; plastic sheeting for agricultural purposes; soundproofing materials; insulators; insulating materials; plastic substances, semi-processed; flexible plastic films, other than for packaging; synthetic resins, semi-processed; semi-worked synthetic resins; insulating plaster.

Class 19: Building materials, not of metal.

2. European Union trade mark application No 17 865 611 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 865 611 for the word mark ‘Polikristal’. The opposition is based on European Union trade mark registration No 1 412 196 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.

a) The goods

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

Class 17: Semi-processed, plastics substances, in the form of foils, plates or little bars.

The contested goods are the following:

Class 17: Acrylic resins, semi-processed; adhesive materials in the form of strips [other than for household medical, stationery use]; shock-absorbing buffers of rubber; anti-glare films for windows [tinted films]; self-adhesive tapes, other than stationery and not for medical or household purposes; plastic fibres, other than for textile use; elastic yarns, other than for textile use; threads of plastic materials, other than for textile use; filtering materials [semi-processed foams or films of plastic]; plastic sheeting for agricultural purposes; soundproofing materials; bark coverings for sound insulation; insulators; insulating materials; insulating bands; plastic substances, semi-processed; flexible plastic films, other than for packaging; synthetic resins, semi-processed; semi-worked synthetic resins; insulating plaster.

Class 19: Roofing, not of metal; roof coverings, not of metal; building materials, not of metal; wall claddings, not of metal, for building; signalling panels, non-luminous and non-mechanical, not of metal; wall linings, not of metal, for building; floor tiles, not of metal; floors, not of metal; door panels, not of metal; door frames, not of metal; doors, not of metal; wainscotting, not of metal; non-metal transportable greenhouses for household use; conservatories, not of metal; ceilings, not of metal; structural frameworks (non-metallic -) for buildings; roller blinds for external use [not of metal or textile]; rigid pipes, not of metal, for building; canopies [structures] of non-metallic materials; rain shelters (non-metallic -).

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 17

The contested plastic substances, semi-processed include, as a broader category, the opponent’s goods. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested plastic fibres, other than for textile use; threads of plastic materials, other than for textile use; flexible plastic films, other than for packaging are included in the broad category of, or overlap with, the opponent’s goods. Therefore, they are identical.

The contested elastic yarns, other than for textile use are similar to the opponent’s goods as they can come from the same undertaking and target the same public through the same distribution channels. Moreover, they have a similar nature and might have the same purpose.

The contested acrylic resins, semi-processed; synthetic resins, semi-processed; semi-worked synthetic resins are similar to the opponent’s goods, as they have the same purpose. They can further coincide in producer, distribution channel and relevant public. Furthermore, they can be complementary to each other.

The contested filtering materials [semi-processed foams or films of plastic]; soundproofing materials; insulators; insulating materials can be considered similar to the opponent’s goods, since they might have the same nature, purpose, producers and distribution channels. They can also be directed at the same public.

The contested insulating plaster is similar to the opponent’s goods, as they can coincide in distribution channels, consumers and producers. Moreover, they can be in competition with each other.

The contested plastic sheeting for agricultural purposes is similar to a low degree to the opponent’s goods, since the opponent’s semi-processed, plastics substances, in the form of foils, for example, require few processing steps to become finished products such as the contested goods. It is therefore reasonable to assume that the consumers will expect these goods to be produced by the same undertakings, target the same public or be complementary to or in competition with each other.

The contested adhesive materials in the form of strips [other than for household medical, stationery use]; shock-absorbing buffers of rubber; anti-glare films for windows [tinted films]; self-adhesive tapes, other than stationery and not for medical or household purposes; bark coverings for sound insulation; insulating bands are finished or semi-finished goods that have covering and/or adhesive purposes and are sold in the form of films, strips or bands. The opponent’s goods are generic semi-processed materials which can be used for a wide range of purposes. The mere fact that some of the contested goods can be made of plastic is not sufficient to find them similar as they target different customers and are not complementary or in competition with one another. Furthermore, their manufacturers may also differ and they are usually sold via different distribution channels or at least at different sections of larger outlets. Therefore, they are dissimilar.

Contested goods in Class 19

The contested building materials, not of metal can be considered highly similar to the opponent’s goods in Class 17, since this broad category includes goods, such as for instance insulation building materials, which may have the same nature, purpose, producers and distribution channels. Furthermore, they can target the same public.

The contested roofing, not of metal; roof coverings, not of metal; wall claddings, not of metal, for building; signalling panels, non-luminous and non-mechanical, not of metal; wall linings, not of metal, for building; floor tiles, not of metal; floors, not of metal; door panels, not of metal; door frames, not of metal; doors, not of metal; wainscotting, not of metal; non-metal transportable greenhouses for household use; conservatories, not of metal; ceilings, not of metal; structural frameworks (non-metallic -) for buildings; roller blinds for external use [not of metal or textile]; rigid pipes, not of metal, for building; canopies [structures] of non-metallic materials; rain shelters (non-metallic -) are all specific building/construction elements and structures with a different nature and purpose than the goods of the opponent in Class 17. The fact that these are all non-metallic and therefore might be composed of the semi-processed plastic material of the opponent is not sufficient per se to find similarity. The goods under comparison target different customers and are neither complementary nor in competition. Furthermore, their manufacturers usually also differ and they are usually sold via different distribution channels or at least in different sections of larger outlets. Therefore, they are dissimilar.

b) 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 or similar to varying degrees are directed at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be high, considering the specialised nature of the goods.

c) The signs

	Polikristal
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.

The signs at issue are both composed of a single verbal element, ‘policril’ and ‘Polikristal’ respectively. Given that the signs as a whole are not meaningful in certain territories, for example in those countries where Italian and Spanish is understood, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking part of the public.

The earlier mark is a figurative mark. However, the figurative element consists in the mere stylisation of the verbal element, which is not particularly striking. As the verbal element ‘policril’ has no meaning for the public in the territory under comparison, its degree of distinctiveness is normal. The contested sign is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the first letter in the contested sign is capitalised. While the contested sign, ‘Polikristal’, as a whole has no meaning for the public in the territory under comparison, the element ‘kristal’ will be associated with ‘crystal’, since it is very close to the equivalent word in the official language in the relevant territories (‘cristallo’ in Italian and ‘cristal’ in Spanish). Bearing in mind that some of the relevant goods are building materials in Class 19, and glass can be used as building materials, this element is weak for these goods.

Visually, the signs coincide in the sequence of letters ‘Poli*ri***l’. However, they differ in their fifth letters, namely ‘c’ in the earlier mark and ‘k’ in the contested sign. They further differ in the contested sign’s additional letters ‘sta’ placed before the final letter ‘l’. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The signs further differ in the graphic depiction of the earlier mark, which will be perceived as an ordinary means of bringing the verbal element to the attention of the public.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Poli*ri***l’. The differences in their fifth letters (‘c’ in the earlier mark and ‘k’ in the contested sign) are not noticeable aurally for the part of the public of the relevant territory being considered. The signs further differ in the pronunciation of the contested sign’s additional letters ‘sta’ placed before the final letter ‘l’.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘kristal’ of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, 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.

d) 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same undertaking or economically linked undertakings.

In the present case, the goods found to be identical and similar to varying degrees are directed at business customers with specific professional knowledge or expertise. The degree of attention will be high. The distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree and aurally even highly similar, because they coincide in their initial part almost entirely, ‘policril’/polikri***l’, except for the different fifth letters, ‘c’ in the earlier mark and ‘k’ in the contested sign, which are aurally identical for the public in the part of the relevant territory being considered. Conceptually, since one of the signs will not be associated with any meaning, the signs are not similar.

Taking all the above into account, and considering that the similarities between the signs are placed in the initial part of the signs, the Opposition Division considers that the differences between the signs, consisting in the stylisation of the earlier mark, in the fifth letters of the signs, and in the letters ‘sta’ placed before the last letter of the contested sign, as well as the conceptual dissimilarity regarding one of the elements of the contested sign, are not sufficient to outweigh the visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or similar goods, despite paying a high degree of attention, is still likely to think that they come from the same undertaking or from economically linked undertakings.

Account is taken 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). 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, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian- and Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 sign must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

José Antonio GARRIDO OTAOLA

Valeria ANCHINI

Edith Elisabeth VAN DEN EEDE

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.