PLUVIAL element not sufficient to save PAM application

In Saint-Gobain Pam SA v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld an opposition filed by the owner of the figurative mark PAM against Saint-Gobain Pam SA's application to register the word mark PAM PLUVIAL as a Community trademark.

Saint-Gobain, a French manufacturer of construction materials, reduced the list of products for which registration was sought twice and finally limited it to goods in Classes 6 and 17 of the Nice Classification for (i) metallic tubes and tube fitters, tubes in cast iron, metallic fitters for the goods previously cited, and (ii) non-metallic fitters for non-metallic tubes and rigid tubes.

Spanish company Propamsa opposed the application on the basis of a Spanish figurative mark featuring, within an oval shape, the word 'Pam' written both horizontally and vertically, and intersecting at the letter 'A'. The mark is registered for building equipment in Class 19. Propamsa also based its opposition on the French part of an international registration filed for the same figurative mark and covering products in Classes 1 and 19.

The OHIM Opposition Division upheld the opposition, as did the Board of Appeal. Saint-Gobain appealed to the CFI on the grounds that:

• in violation of Article 43 of the Community Trademark Regulation, the Board of Appeal had refused Saint-Gobain's request to order Propamsa to file evidence of use of its prior trademarks on the grounds that the request was presented for the first time to the Board of Appeal; and
  
  
• there was no likelihood of confusion between the marks under Article 8(1)(b) of the regulation.

The CFI dismissed the appeal. Considering first the claim made under Article 43, the CFI took into consideration Saint-Gobain's allegation that the regulation does not impose a deadline on requests to prove evidence of trademark use. The court noted, however, that it held in FLEXI AIR (see No movement in favour of L'Oréal in FLEXI AIR appeal) that a request for evidence of use has to be presented within the deadline given by the Opposition Division to present observations. The court also took into consideration the fact that no other specific delay had been given to allow Saint-Gobain to request evidence of use. However, the court held that the real issue was not one of delay, but to decide at which stage of the OHIM proceedings the request is supposed to be made. According to the court, the issue of evidence of use, when raised, needs to be solved before deciding upon the opposition and becomes a preliminary issue in an opposition proceeding. In addition, the Opposition Division has jurisdiction in first instance to decide on the requests made by the parties. Therefore, the CFI held that evidence of use of the PAM mark should have been requested during the proceeding before the Opposition Division.

With regard to the claim of violation of Article 8(1)(b), the court held that the likelihood of confusion was to be considered taking into account all the products for which the PAM mark was registered as Saint-Gobain's request for evidence of use had failed. The CFI found that the category of products included any raw material or semi-finished product useful for construction as well as the products manufactured by using these materials.

Concerning the comparison of the products themselves, the court noted that one must take into account all the relevant factors. As a consequence, it held that the products designated by Propamsa's mark as well as those designated by Saint-Gobain's mark, which include pipes, treatment of used water, fire protection equipment and drinking water pipes could be used identically for building construction and infrastructure and therefore were similar.

The court also found some products to be complementary since a close link exists between them. The court reasoned, somewhat unconvincingly, that this correspondence would lead consumers to think that such products can come from the same company. This, held the court, was particularly true for the tubes and tube fitters covered by Saint-Gobain's mark as they cannot be used without the construction equipment covered by Propamsa's mark.

Lastly, the court held that the products at stake were sold through the same points of sale and distribution channels. Accordingly, the CFI held that the products were similar.

Next, the court rejected Saint-Gobain's contention that the relevant public is a specialized one consisting mainly of people in charge of public building work (in particular water-related projects) within local administrations. Instead, the court held that the relevant public is a specialized public consisting of professionals of the construction and maintenance sector and the public at large, including the average consumer who can use the same products for home-improvement work.

Turning to the comparison of the signs themselves, the court held that:

• the word 'Pam' was the dominant part of Propamsa's mark and was identical to the first part of the PAM PLUVIAL mark;
  
  
• the two marks were visually and phonetically similar; and
  
  
• even though the word 'pluvial' appeared in Saint-Gobain's mark only, it was just an auxiliary part of the mark since its meaning ('related to rain') is identical in French and Spanish. Therefore, the public may well consider it as an indication affixed to the products designated by Propamsa's mark.

Accordingly, the court held that the signs were likely to be confused and dismissed the appeal.

Richard Milchior, Granrut Avocats, Paris