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Materis Paints Italia SpA, filed a EUTM application for the word mark CALCILITE in relation to paints, lacquers and preservatives and natural resins in Class 2, and pargets (a type of decorative plastering material) in Class 19. Despite an opposition by Alpha Calcit Füllstoffgesellschaft mbH (Alpha), CALCILITE was registered as an EU trade mark in 2012.

Alpha filed an application for a declaration of invalidity against the mark CALCILITE. Alpha relied on their earlier EU word mark CALCILIT, registered in respect of the building filler crystalline calcium carbonate (CCCF) in Class 1 and various forms of marble in Class 19, Alpha were requested to file proof of use.

The Cancellation Division rejected Alpha’s application for a declaration of invalidity. They found a lack of any similarity between the marks and the corresponding goods.

The EUIPO dismissed Alpha’s appeal who appealed to the EU General Court.

Alpha argued that the Board of Appeal had incorrectly considered that there were no similarities between CCCF (Class 1) and the goods in Classes 2 and 19 covered by the contested trade mark CALCILITE. CCCF is normally used as a filler in the manufacture of building products. As such it was argued the likelihood of confusion for the public would be high if similar industrial products bearing the marks CALCILIT and CALCILITE were available to buy.

When comparing CCCF to raw natural resins, Alpha argued these goods are similar, in so far as they complement each other and share the same purpose (both are used in the manufacture of adhesives), and consequently, they are intended for the same purchaser. Lastly, Alpha argued that in view of the average distinctive character of the earlier trade mark CALICIT, the pronounced similarity between the signs at issue and the clear correspondence between the goods, created a strong likelihood of confusion.

The EUIPO rejected the claim that CCCF and the other Class 2 products were similar in nature. It argued that despite CCCF being a substance used in various products it was not a finished good in itself. It added that the goods also differ as to their intended purpose, in so far as CCCF is normally used in the production of other goods, whereas the other Class 2 products are normally purchased by end consumers for use in decoration.

The EUIPO also centred its arguments on how Alpha had conceded in the administrative procedure that CCCF was a raw material. It contended that this was indeed the case and inferred that CCCF is not similar to the goods covered by the contested trade mark, as the latter are intended for end consumers. It made reference to the case-law of the courts of the European Union, according to which the fact that one product is used in the manufacture of another is not sufficient reason to regard them as being similar products

Alpha’s appeal was rejected in respect of Class 19 as it failed to prove any genuine use of CALCILIT for such goods.

Further, the Court agreed with the EUIPO that there was no similarity between the compound CCCF and raw natural resins (which were not competing or similar products) nor between CCCF and pargets, which had a different nature, function and method of use and did not share a relevant public in common. It therefore rejected the appeal in relation to these goods.

The Court held, however, that the Board of Appeal’s decision in relation to the paints, lacquers and preservatives in Class 2 of the CALCILITE application, should be annulled. They found that these were in fact goods similar to CCCF and as such that there was a likelihood of confusion between the two marks. The Court also held that the EUIPO had failed to identify the relevant public for this purpose (professionals in the industrial sector) and to take into account the fact that professionals will most likely purchase paints or other covering agents in order to manufacture their finished products and it was at this stage they might become confused as to the origin of any CALCILITE marked goods.

Case T-742/14