OPPOSITION DIVISION

OPPOSITION No B 2 782 954

CHT R. Beitlich GmbH, Bismarckstr. 102, 72072 Tübingen, Germany (opponent),

represented by Penningtons Manches LLP, 125 Wood Street, London EC2V 7AW,

United Kingdom (professional representative)

a g a i n s t

Cnnc Huayuan Titanium Dioxide Co., Ltd., Second floor, No. 359, Hecheng West

road, Jiayuguan, Gansu Province, People's Republic of China (applicant),

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 15 592 454 . The opposition is based on United Kingdom

trade mark registration No 2 005 241 in relation to which the opponent

invoked Article 8(1) (b) and Article 8(5) EUTMR, and on United Kingdom non-

registered trade mark 'CHT' in relation to which the opponent invoked Article 8(4)

EUTMR.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

Decision on Opposition No B 2 782 954 page: 2 of 6

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.

tarred felt [paints]; ceramic paints; coatings [paints]; wood coatings [paints]; lacquers;

paints; varnishes.

Contested goods in Class 2

Lacquers; paints; varnishes are identically contained in both lists of goods.

The contested zinc oxide [pigment]; pigments; titanium dioxide [pigment] are included

in the broad category of the opponent’s colorants. Therefore, they are identical.

The contested coatings for tarred felt [paints]; ceramic paints; coatings [paints]; wood

coatings [paints] are included in the broad category of the opponent’s paints.

Therefore, they are identical.

b) Relevant public — degree of attention

However, some of the goods such as zinc oxide [pigment]; titanium dioxide [pigment]

are more likely to be directed only at the latter customers. The degree of attention

may vary from average to high, depending on the specialised nature of the goods.

The degree of attention of the public at large is deemed average whereas the degree

of attention of the professionals may vary from average to high, depending on the

specialised nature of the goods, the frequency of purchase and their price.

Decision on Opposition No B 2 782 954 page: 3 of 6

c) The signs

Earlier trade mark Contested sign

the relevant goods and is distinctive. In the contested sign, it is combined with a final

letter 'i' but this letter does not add any concept for either part of the public in relation

to the goods covered by the sign and the sign as a whole is distinctive.

The earlier mark contains a figurative element which is placed together with the word

element in a rectangular frame. While the opponent considers that this element

represents a flask, the Opposition Division considers that such is not obvious to the

relevant public as a whole. In any event, in this respect, it should be noted that 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

impact on the consumer as explained above. Therefore, the signs are highly similar.

Aurally, the signs at issue will be pronounced by spelling out each of the letters

individually. The pronunciation of the signs coincides in the sound of the letters ‛CHT’,

present identically in both signs. The pronunciation differs in the sound of the letters

‛i’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous considerations and in view of

these, a conceptual comparison is either not possible as neither sign has a meaning

as a whole, or must lead to concluding that the signs are not conceptually similar as

the contested sign will not be associated with any meaning whereas a flask may be

Decision on Opposition No B 2 782 954 page: 4 of 6

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 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.

According to the opponent, the earlier mark has been extensively used and enjoys an

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 which can be made with the registered mark, the degree of

similarity between the marks and between the goods or services identified (recital 8

of the EUTMR). It must be appreciated globally, taking into account all factors

relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik,

EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In addition, the global assessment of the risk of confusion entails certain

interdependence between the factors taken into account and, in particular, between

the similarity of the trademarks and the similarity of the goods or services covered.

Accordingly, a low degree of similarity between those goods or services may be

offset by a high degree of similarity between the marks, and vice versa (23/10/2002,

T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods at issue are identical and the signs are visually, aurally

highly similar in that the single word element 'CHT' of the earlier mark is entirely

distinctiveness of the earlier mark has been seen as normal.

and the degree of attention varies from average to high. In this respect, account must

be taken of the fact that average consumers rarely have the chance to make a direct

comparison between different marks, but must trust in their imperfect recollection of

them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even

consumers who pay a high degree of attention need to rely on their imperfect

recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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Moreover, 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. In the present case, it is highly

conceivable that the relevant consumer will perceive the contested mark as a sub-

brand, a variation of the earlier mark, 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).

Indeed, the differences caused by the figurative elements are not such as to have

much of an impact on the consumer and the additional letter 'i' in the contested sign,

in lower case where the preceding letters are all represented in upper case, can be

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

other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo

Media, S.L., EU:T:2004:268).

Likewise, since the opposition is fully successful on the basis of the ground of

Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the

opposition, namely Article 8(4) and Article 8(5) EUTMR.

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

Decision on Opposition No B 2 782 954 page: 6 of 6

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.

The amount determined in the fixation of the costs may only be reviewed by a

decision of the Opposition Division on request. According to Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be

filed within one month of the date of notification of this fixation of costs and will be