OPPOSITION No B 3 066 583

Cromology Services, Société par actions simplifiée, 71, Boulevard du Général Leclerc, 92110 Clichy, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

F&P GmbH, Max-Planck-Str. 111, 32107 Bad Salzuflen, Germany (applicant), represented by IT-Recht-Kanzlei, Alter Messeplatz 2, 80339 Munich, Germany (professional representative).

On 25/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 583 is upheld for all the contested goods.

2. European Union trade mark application No 17 892 119 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 17 892 119 for the figurative mark . The opposition is based on the earlier French trade mark registrations No 1 378 008 and No 4 004 790, both for the word mark ‘STIC’, and on the earlier French trade mark registration No 1 468 296 for the word mark ‘STIC B’. 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, inter alia, the following:

1) French trade mark registration No 1 378 008

Class 27: Floor coverings, carpets, rugs.

2) French trade mark registration No 4 004 790

Class 17: Sealing, insulating and stopping materials.

3) French trade mark registration No 1 468 296

Class 1: Adhesives (glue) for use in industry.

The contested goods are the following:

Class 1: Adhesives for floor coverings.

Class 17: Insulating material; insulating underlays.

Class 27: Flooring materials.

Contested goods in Class 1

The contested adhesives for floor coverings are included in, or overlap with, the broad category of the opponent’s adhesives (glue) for use in industry covered under French trade mark registration No 1 468 296. Therefore, they are identical.

Contested goods in Class 17

The contested insulating material is identically contained in the opponent’s list of goods covered under French trade mark registration No 4 004 790 (although in plural).

The contested insulating underlays are included in the broad category of the opponent’s insulating materials covered under French trade mark registration No 4 004 790. Therefore, they are identical.

Contested goods in Class 27

The contested flooring materials include, as a broader category, the opponent’s floor coverings covered under French trade mark registration No 1 378 008. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large and at a professional public with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

French trade mark registrations: No 1 378 008 (earlier mark 1) No 4 004 790 (earlier mark 2) STIC French trade mark registration No 1 468 296 (earlier mark 3) STIC B
Earlier trade marks	Contested sign

The relevant territory is France.

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 contested sign is a figurative sign composed of two verbal elements, namely ‘silent’ and ‘stick’, written in two lines in slightly stylised italic lower-case letters; ‘silent’ is slightly smaller and depicted in brown and ‘stick’, in the line below, is in green. There is a figurative element depicted to the right of the verbal elements which may be perceived by part of the public in the relevant territory, as noted by the opponent, as a stylised roller and floor.

The verbal element ‘stick’ of the contested sign may be understood by part of the public in the relevant territory, at least, as referring to some of the concepts mentioned by the opponent in its submission of 09/05/2019 (e.g. as a ‘slim and flexible rod for riders use’, ‘cosmetic product presented in the form of a stick’, ‘hockey stick’, or ‘group of paratroopers dropped in the form of a stick’). Whether or not it is understood, the word ‘stick’ is distinctive because in any event it bears no meaning in relation with the goods at issue.

The relevant public will understand the verbal element ‘silent’ of the contested sign as meaning ‘the state or quality of being silent; the absence of sound or noise; stillness’, since it is very close to the equivalent word in French, silence. Bearing in mind that the relevant goods are, inter alia, insulating and flooring materials in Classes 17 and 27, this element is considered weak for these goods, as it merely indicates their intended purpose. This equally applies to the remaining relevant goods, namely adhesives for floor coverings in Class 1, as they are intended to ensure that the floorings are well installed and so they also contribute to the silence.

As for the figurative element of the contested sign, whether or not the public in the relevant territory sees any concept therein, the fact remains that when signs consist of both verbal and figurative components (as the contested sign does in the present case), 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).

Finally, the contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

In contrast, the earlier trade marks are all word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper- or lower-case letters or a combination thereof (21/09/2012, T‑278/10, Western Gold, EU:T:2012:1257, § 44, 46).

The earlier marks have no meaning, as a whole, in the relevant territory and are, therefore, distinctive to a normal degree. However, given the pronunciation of ‘STIC’, it cannot be excluded that at least part of the relevant public, when perceiving the marks aurally, will think of ‘stick’ and the meanings given above in relation to the contested sign. In addition, the letter ‘B’ of earlier mark 3 will be perceived by the public in the relevant territory as a letter of the Latin alphabet. It is considered to have a normal degree of distinctiveness in relation to the relevant goods as this letter is not descriptive, allusive or otherwise related to these goods.

Visually, the signs coincide in the sequence of the letters ‘STIC*’ and they differ in the remaining elements of the contested sign, namely the letter ‘k’ present at the end of the verbal element ‘stick’, the verbal element ‘silent’ and the figurative element as described above. Earlier mark 3 also differs from the contested sign in the letter ‘B’ following the letter sequence ‘STIC’, which the signs have in common.

The signs under comparison also differ in the slight stylisation of the verbal elements of the contested sign, namely the typeface and colour of the letters. However, this stylisation is purely decorative and is not considered particularly elaborate or sophisticated, so it will not distract the consumer’s attention from the words it embellishes.

In view of the foregoing and considering, in particular, the fact that earlier marks 1 and 2 are fully included in one of the elements of the contested sign, these signs are visually similar to an average degree. As regards the visual comparison between earlier mark 3 and the contested sign, given the presence of the additional letter ‘B’ in this earlier mark, these signs are visually similar to a below average degree.

Aurally, in French, the word ‘stick’ of the contested sign and the word ‘STIC’ of the earlier marks are pronounced identically. The pronunciation of the signs differs in the sound of the element ‛silent’ of the contested sign. Earlier mark 3 also differs from the contested sign in the sound of the letter ‘B’.

Therefore, earlier marks 1 and 2 and the contested sign are aurally similar to an average degree whereas earlier mark 3 and the contested sign are aurally similar to a below average degree due to the presence of the additional letter ‘B’ in this earlier mark.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. Since when perceiving it aurally, at least part of the relevant public will associate the words ‘STIC’ and ‘stick’ with the same meaning given above, the signs are conceptually similar to an average degree, at least for this part of the relevant public, whether or not the remaining concepts in the signs are understood.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As concluded above, the contested goods are identical to the opponent’s goods; the relevant public consists of the public at large and professionals; the degree of attention varies from average to high; the earlier marks have a normal degree of inherent distinctiveness.

As explained in detail above in section c) of this decision, the signs in conflict are visually and aurally similar to at least a below average degree and for at least a part of the public in the relevant territory they are conceptually similar to an average degree.

The Opposition Division is of the opinion that the differences between the signs, as indicated above, are not sufficient to counteract their similarities. Indeed, 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/services covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This is also justified by the fact that the differentiating element ‘silent’ of the contested sign will be perceived as referring to a characteristic of the goods in question, as seen above, and, at the same time, its figurative element and stylisation have a lower impact on the consumer’s perception than the word ‘stick’ as explained in detail above. It is therefore conceivable that the relevant public, even the part of it with a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the public in the relevant territory and, therefore, the opposition is well founded on the basis of the opponent’s French trade mark registrations No 1 378 008, No 4 004 790 and No 1 468 296.

It is to be recalled that, if a part of the public in the relevant territory may be confused about the origin of the goods in question, this is sufficient to establish a likelihood of confusion. It is not necessary that it is established that all actual or potential consumers of the relevant goods in the relevant territory are likely to be confused.

It follows 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

Anna ZIOŁKOWSKA

Martin MITURA

Martina GALLE

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.