OPPOSITION No B 3 063 410

Altenloh, Brinck & Co. GmbH & Co. KG, Kölner Str. 71-77, 58256 Ennepetal, Germany (opponent), represented by Becker & Müller, Turmstr. 22, 40878 Ratingen, Germany (professional representative)

a g a i n s t

APC - Alcides de sá Pinto Castro Lda., Zona Industrial de Rio Meão, Rua: 3, Apartado: 485, 4520-475 Rio Meão, Portugal (applicant), represented by Simões Garcia Corte-Real & Associados - Consultores Lda. Rua Castilho 167 2º andar, 1070-050 Lisbon, Portugal (professional representative).

On 25/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 410 is upheld for all the contested goods.

2. European Union trade mark application No 17 885 202 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 17 885 202 . The opposition is based on, inter alia, European Union trade mark registration No 95 562 for the word mark ‘ABC’.  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 6: Mechanical fastening elements, cold formed parts, rivets, nuts, threaded inserts, screws, screw nuts, mechanical anti-theft devices, so far as included in class 6, locks (other than electric), small hardware of metal, safety containers, safety cashboxes, mini-safes; all the aforementioned goods of metal.

The contested goods are the following:

Class 6: Common metal drawer pulls; Hinges of metal; Suspension clamps of metal; Locks of metal; Bolts (Lock -); Lock parts of metal; Knobs of metal; Metal keys for locks; Metal springs; Door springs, non-electric; Closures of metal; Metal locksets; Door chains of metal; Metal bolts for locking doors; Fasteners of metal for casement windows; Hand railings of metal; Fittings of metal for windows; Window furniture of metal; Grab rails of metal; Holders (Fixed -) of metal for towels; Toilet paper dispensers, fixed, of metal; Bathtub grab bars of metal; Handrails of metal for baths and showers; Basin plugs of metal; Bolts of metal; Screw cups of metal; Metal expanding sleeves for affixing screws; Stops of metal; Wire stretchers [tension links]; Pot hooks of metal; Window casement bolts of metal; Cremone bolts of metal for windows; Espagnolette mechanisms of metal; Metal safes; Wire rope; Wire rope; Cable thimbles of metal; Cable straps of metal; Cable clamps of metal; Cable clamps of metal; Metal cable wire; Ferrules of metal for handles; Wheel clamps [boots]; Furniture casters of metal; Metal wheel clamps; Shims; Gates of metal; Locking gate hasps of metal; Metal gate latches; Wall plugs of metal; Nails of metal; Shaft covers of metal; Poles of metal; Rods of metal; Cupboard fittings of metal; Ring-shaped fittings of metal; Safety fittings of metal for doors; Hooks of metal for clothes rails; Metal clothes hooks; Metal clothes hooks; Letter-box flaps of metal; Letter boxes of metal; Letter-box covers of metal; Letter-box flaps of metal; Metal rails; Lock barrels of metal; Mountings of metal for glass; Window glazing fixtures made of metal; Metal handles; Signs plates of metal; Signs, non-luminous and non-mechanical, of metal; Roller doors of metal; Metallic frames for sliding doors; Rollers (Metal -) for sliding windows; Runners of metal for sliding doors; Runners of metal for sliding doors; Ironwork for windows; Ironwork for doors; Nuts [metal hardware]; Sleeves [metal hardware]; Springs [metal hardware]; Metal hooks; Horseshoe nails; Door fittings, of metal; Fittings of metal for building; Buckles of common metal [hardware].

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.

The contested common metal drawer pulls; hinges of metal; suspension clamps of metal; locks of metal; bolts (Lock -); lock parts of metal; knobs of metal; metal keys for locks; metal springs; metal locksets; door chains of metal; metal bolts for locking doors; grab rails of metal; holders (Fixed -) of metal for towels; basin plugs of metal; bolts of metal; screw cups of metal; metal expanding sleeves for affixing screws; stops of metal; wire stretchers [tension links]; pot hooks of metal; wire rope; (listed twice) cable thimbles of metal; cable clamps of metal (listed twice); metal cable wire; ferrules of metal for handles; wheel clamps [boots]; furniture casters of metal; metal wheel clamps; shims; wall plugs of metal; nails of metal; cupboard fittings of metal; ring-shaped fittings of metal; hooks of metal for clothes rails; metal clothes hooks (listed twice); lock barrels of metal; metal handles; nuts [metal hardware]; sleeves [metal hardware]; springs [metal hardware]; metal hooks; horseshoe nails; buckles of common metal [hardware] are included in or overlap with the opponent’s small hardware of metal. Therefore, they are identical.

The contested metal safes include, as broader category the opponent’s safety cashboxes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested closures of metal; letter-box flaps of metal (listed twice); letter boxes of metal; letter-box covers of metal are similar to the earlier safety containers because they are complementary, coincide in distribution channels, end user and producer.

The contested door springs, non-electric; fasteners of metal for casement windows; fittings of metal for windows; window furniture of metal; window casement bolts of metal; cremone bolts of metal for windows; espagnolette mechanisms of metal; gates of metal; locking gate hasps of metal; metal gate latches; safety fittings of metal for doors; window glazing fixtures made of metal; roller doors of metal; metallic frames for sliding doors; rollers (Metal -) for sliding windows; runners of metal for sliding doors (listed twice); ironwork for windows; ironwork for doors; door fittings, of metal are similar to the earlier small hardware of metal because they are complementary to the opponent’s products to the extent that they can be assembled together. The conflicting goods are fittings or frames, aimed at the same products (doors, windows, gates), with the consequence that their final purpose is also similar. Furthermore, those goods have the same distribution channels and can be found in the same specialised outlets (for instance, do-it-yourself stores). Their manufacturers may also coincide.

The contested hand railings of metal; toilet paper dispensers, fixed, of metal; bathtub grab bars of metal; handrails of metal for baths and showers; cable straps of metal; metal rails; mountings of metal for glass; fittings of metal for building; shaft covers of metal; signs plates of metal; signs, non-luminous and non-mechanical, of metal are at least similar to the earlier small hardware of metal because the contested goods are metal hardware or metal elements used in building and construction. The goods may coincide in producers, distribution channels and end users.

Cold forming refers to a mechanical operation (such as bending, drawing, hammering, rolling) in which a metal shape is permanently deformed into a new shape, normally at room temperature, thereby increasing the hardness and strength of the metal. The contested poles of metal; rods of metal are therefore at least similar to the opponent’s cold formed parts because they have the same nature. They may also coincide in 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 or similar are directed at the public at large as well as professionals in the building and construction industry. The degree of attention is considered to be average.

3. The signs

ABC
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 earlier mark ‘ABC’ will be perceived by the relevant public as the first three letters of the Latin alphabet without any specific meaning in relation to the goods and it is distinctive to an average degree.

The figurative element in the contested mark displays no particular concept; it has no relation to the goods and is distinctive. However, it is not more eye-catching than the other element and the verbal element ‘APC’ is not overshadowed by the figurative element either in size or prominence.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign 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).

Visually, the signs coincide in their initial ‘A’ and their last letter ‘C’. While they differ in their second letter ‘B’/’P’, the appearance of these letters also displays certain similarities. The signs differ in the figurative element and stylization of the contested mark.

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

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 ‘A’ and ‘C’, present identically in both signs. The sound or pronunciation of the contested sign’s differing letter ‘P’ is also very close to the earlier mark’s differing letter ‘B’ sound, given that these letters are both consonants produced in the front of the mouth.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark 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.

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. Global assessment, other arguments and conclusion

The goods are identical or similar and the attentiveness of the relevant public is average.

The signs in dispute both have three letters; both are, consequently, short marks and it is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

The only different letter is a phonetically and visually similar letter, inserted between two coinciding sounds/letters, where it is pronounced in a very similar way. Consequently, the fact that the signs coincide in two letters and the differing one is phonetically and visually similar cannot be offset by the visual and conceptual differences.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 95 562. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 95 562 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Aldo BLASI

Marianna KONDAS

IBAÑEZ Sandra

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.