Building materials and building construction services held to be dissimilar to asphalt

European Union
In Bayerische Asphaltmischwerke GmbH & Co KG für Straßenbaustoffe v Office for Harmonisation in the Internal Market (OHIM) (Case T-426/09, October 26 2011), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that certain building materials and building construction services were not similar to asphalt products. 
 
In December 2003 Koninklijke BAM Groep NV filed a Community trademark (CTM) application for BAM (and device) in Classes 6, 19, 37 and 42 of the Nice Classification. The application was filed in Dutch and French. After the publication of the application, German company Bayerische Asphaltmischwerke GmbH & Co KG für Straßenbaustoffe filed an opposition based on its earlier German mark BAM (and device), registered in Classes 7 and 19. Even though the decision of the General Court is silent in that respect, it appears from the previous decisions that the opposition was limited to Classes 19 and 37 and that Bayerische Asphaltmischwerke's opposition was not directed at the goods in Class 6 and the services in Class 42.

Upon request by the applicant, the opponent demonstrated genuine use of its BAM mark in respect of “asphalt and building materials derived from asphalt and for the production of asphalt”. In May 2008 the Opposition Division of OHIM upheld the opposition with respect to “building materials, not of metal; non-metallic rigid piping for building; asphalt, pitch and bitumen”. However, it rejected the opposition in respect of “non-metallic transportable structures; monuments, not of metal” and of all the services in Class 37, because these goods and services were not similar to "asphalt and building materials derived from asphalt and for the protection of asphalt".
 
The opponent appealed. The Second Board of Appeal dismissed the appeal in most points; however, it annulled the decision of the Opposition Division as far as “non-metallic rigid piping for building” was concerned. The board argued that the Opposition Division had not taken into account the fact that "asphalt and building materials derived from asphalt and for the protection of asphalt" were all for road construction, and that these road construction-related goods were not similar to non-metallic rigid piping for building.

In December 2009 the applicant apparently withdrew the CTM application in a motion which was submitted in English, but not in the languages of the proceedings, namely Dutch or French. The opponent appealed to the General Court, primarily arguing that a likelihood of confusion existed with respect to all goods and services and that the board had assessed the similarity of the goods and services incorrectly. 
 
The General Court first considered whether the action had become devoid of purpose and whether there was any need to adjudicate the case because the applicant had apparently withdrawn the CTM application. The General Court confirmed that the withdrawal of a CTM application must be filed either in the language used for the filing of the application or in the second language indicated in the application. In this case, the two languages were Dutch and French, and the withdrawal was submitted in English. As this was the wrong language, the withdrawal could not be taken into account by OHIM; therefore, the application filed in December 2003 was still pending, even though the applicant had filed a new application for an identical mark in February 2010. 
 
While it was undisputed that the earlier BAM mark was used only for "asphalt and building materials derived from asphalt and for the production of asphalt", the parties disagreed as to whether the scope of protection of "building materials" should have been limited to those pertaining to "road construction". The General Court considered the arguments of all involved parties and came to the conclusion that it was not necessary to settle this issue. Even if the board had made an error, this would not have any bearing on the validity of the contested decision, as the goods in question were not similar, even if a broader list of goods was taken into account for the earlier mark.
 
The General Court reiterated settled case law according to which all relevant factors relating to the goods or services must be taken into account, including, but not limited to:

  • their nature;
  • their end users;
  • their method of use; and
  • whether the goods or services were in competition with each other or were complementary.
The court then compared the "asphalt products" for which the earlier trademark was used with "non-metallic rigid piping for building, non-metallic transportable structures and monuments, not of metal" and "building construction, repairs and maintenance", and agreed with the board that they were not similar, as they had a different origin and physical condition, and their nature, purpose, composition, method of production, uses and distribution channels were different.

With respect to the services in Class 37, the opponent argued that there was at least one German company (Friedrich Steinhagen GmbH & Co) which offered both services in Class 37 and asphalt products. The General Court held that the fact that certain undertakings offered the services in question at the same time as the goods manufactured by the applicant was not per se sufficient for them to be regarded as similar. The General Court thus upheld the board's decision.
 
Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg

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