DECISION
of the First Board of Appeal
of 11 June 2015

In Case R 291/2014-1

LLR-G5 Limited
Goldenmile Industrial Estate, Breaffy Road Castlebar, Mayo Ireland	Applicant / Appellant

represented by MACLACHLAN & DONALDSON, 2b Clonskeagh Square, Clonskeagh Road, Dublin 14, Ireland

v

Glycan Finance Corporation Ltd
Suite 1 Velocity Tower- 10 St Mary's Gate Sheffield S1 4LR United Kingdom	Opponent / Respondent

APPEAL relating to Opposition Proceedings No B 2 027 053 (Community trade mark application No 10 424 703)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), C. Rusconi (Rapporteur) and M. Bra (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 17 November 2011, LLR-G5 Limited (‘the applicant’) sought to register the figurative mark, in colour

for the following goods:

Class 1 – Chemicals and chemical products, not including resins or hardeners for resins, for use in industry; organic silicon for use in industry;

Class 3 – Toilet preparations; cleaning preparations; cosmetic preparations; preparations for the care of the skin and hair; anti-aging creams; soaps, perfumery, hair lotions, dentifrices, all containing organic silicon; preparations containing organic silicon for the care of the body, skin and hair;

Class 5 – Pharmaceutical preparations; medicated preparations for the care of the skin and hair; medicated toilet preparations; nutritional food supplements; food supplements containing organic silicon;

Class 32 – Non-alcoholic drinks and preparations for making such drinks; drinks containing organic silicon and included in Class 32; preparations containing organic silicon for use in making beverages.

2. The application was published in the Community Trade Marks Bulletin No 47/2012 of 7 March 2012.

3. On 6 June 2012 Glycan Finance Corporation Ltd. (‘the opponent’) opposed the application as regards all the goods, on the grounds of Article 8(1)(b) and (5) CTMR, on the basis of its following earlier rights:

• International registration No 944 740 for the word mark ‘Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5’, designating the European Union, the United Kingdom, Ireland, the Benelux, Germany, Spain, France, Italy, Portugal and Romania, in respect of ‘chemical goods’ in Class 1, ‘pharmaceutical products’ in Class 5 and ‘beers’ in Class 32;

• International Registration No 952 406 for the word mark ‘Silicium Organique G5’, designating the European Union, the United Kingdom, Ireland, the Benelux, Germany, Spain, France, Italy, Portugal and Romania, in respect of ‘mineral waters’ in Class 32;

• French registration No 3 457 452 for the word mark ‘SILICIUM ORGANIQUE GLYCAN 5 SI-GLYCAN-5 SI-G5’, in respect of goods in Classes 1, 3 and 5.

4. By decision dated 27 November 2013, the Opposition Division firstly dismissed the earlier French right on the ground that it stood in the name of Christian Assoun and the opponent had not proved ownership thereof. The Opposition Division secondly:

1. Refused the CTM application, on the grounds of a likelihood of confusion in the European Union with IR No 944 740 and No 952 406, in respect of ‘toilet preparations; cosmetic preparations; preparations for the care of the skin and hair; anti-aging creams; soaps, hair lotions, dentifrices, all containing organic silicon; preparations containing organic silicon for the care of the body, skin and hair’ in Class 3, ‘pharmaceutical preparations; medicated preparations for the care of the skin and hair; medicated toilet preparations; nutritional food supplements; food supplements containing organic silicon’ in Class 5 and ‘non-alcoholic drinks and preparations for making such drinks; drinks containing organic silicon and included in Class 32; preparations containing organic silicon for use in making beverages’ in Class 32;

2. Dismissed the opposition, because of the lack of confusion with the two IRs, as regards ‘chemicals and chemical products, not including resins and hardeners for resins, for use in industry; organic silicon for use in industry’ in Class 1 and ‘cleaning preparations; perfumery; all containing organic silicon’ in Class 3.

The decision was reasoned as follows:

• The goods in Classes 3, 5 and 32 under a), as well as the goods in Class 1 under b), are either identical or similar to those covered by the earlier IRs;

• The ‘cleaning preparations; perfumery; all containing organic silicon’ are dissimilar;

• The sequence ‘SILICIUM ORGANIQUE G5’ is distinctive for the goods in Classes 3, 5 and 32 which target non-professional consumers who are unaware of organic silicon; however, the sequence is descriptive for the goods in Class 1 which target highly observant professionals in the chemical industry;

• Therefore, there is likelihood of confusion as regards the above identical and similar goods in Classes 3, 5 and 32 but not for the identical goods in Class 1 and the dissimilar goods in Class 3;

• The opposition based on Article 8(5) CTMR is dismissed because of the lack of substantiation of the marks’ reputation within the time-limit.

5. On 22 January 2014 the applicant submitted a notice of appeal (the statement of grounds was received in due time) and, after announcing that it had applied for a declaration of invalidity (in the EU) of the IRs on which the decision was based, requested that the appeal proceedings be suspended. The applicant added that the Board should in any case annul the decision on the ground that the shared element (SILICIUM ORGANIQUE) of the marks designated the ingredient of the goods – something that the relevant public was aware of – and was thus unable, contrary to what the Opposition Division appeared to believe, to cause any confusion in the marketplace.

6. The opponent responded on 6 April 2014 that the appeal was unfounded and that the Board should refuse the contested application ‘in totality’. The opponent’s submissions were the following:

• It is admitted that the ownership of the earlier French registration was not substantiated in time but an extract from INPI (the French Trade Mark Office) showing that Christian Assoun is the proprietor of the registration is now attached;

• The use of ‘G5’ and ‘Silicium Organique’ in the mark ‘is not the intellectual or industrial property of the applicant’; that intellectual property belongs to the opponent by virtue of the French registration; the French mark should, therefore, be ‘reintroduced’ into the proceedings;

• The applicant had no right ‘to invent the new chemical product “Silicium Organique” in classes 1-3-5-32 and use for themselves’[sic];

• The ‘association of the alpha-numerical G5 and Silicium Organique is the key word MORE used by clients onto internet browsers’[sic];

• The applicant ‘permanently use and violate’ [sic] the opponent’s trade mark rights in ‘SILICIUM ORGANIQUE’ and ‘G5’ in Europe;

• The applicant does not correctly label its goods, thus misleading consumers about the ingredients thereof; this amounts to unfair practices and ‘fraud’ under French law.

7. The parties subsequently exchanged more observations.

Reasons

8. The appeal complies with Articles 58, 59 and 60CTMR and Rule 48 CTMIR as amended. It is, therefore, admissible.

9. The opponent’s request, in the response to the appeal, that the CTM application be rejected ‘in totality’ seeks to amend the contested decision on a point not raised in the appeal. The request, therefore, falls within the scope of Article 8(3) BOA-RP and is admissible.

On the scope of review by the Board

10. The Opposition Division refused the CTM application for the goods listed in this decision under paragraph 4(a) but allowed it to proceed for the goods under paragraph 4(b).

11. As a result of the applicant’s appeal under Articles 58 to 60 CTMR and of the opponent’s request under Article 8(3) BOA-RP, the Board has to re‑examine the opposition as regards the entire list of goods.

On the request for a suspension of the proceedings

12. The contested decision was taken on the basis of the EU designation of the opponent’s two international registrations. The applicant has challenged the validity of these designations before OHIM’s Cancellation Division (applications No 8 155 C and No 8 216 C) and then, immediately thereafter, applied for a suspension of the present proceedings. The applicant argues that it is necessary to wait until the Office determines if the opponent’s earlier rights in the EU are valid before ruling on the subject opposition and appeal.

13. The Board notes, however, that the notice of opposition also claimed, as regards the two IRs, other territorial designations. According to Romarin (WIPO’s online database), some of these were valid at the date of opposition, and still are today, meaning that the international marks enjoy protection in their respective territories.

14. IR No 944 740 enjoys protection in France, Italy and Romania for all the goods and in Portugal for all the goods except ‘pharmaceutical products’. IR No 952 406 enjoys protection in the Benelux, Germany, France and Italy for all the goods.

15. Clearly, the protection of these IRs in the cited jurisdictions is not affected by the invalidity proceedings recently initiated by the applicant.

16. It follows that there is no need to wait for the outcome of these proceedings before deciding on the appeal and the opposition. The appeal and the opposition may be decided on the basis of the opponent’s rights in the remaining jurisdictions which are also part of the EU, covered by IR No 944 740 (France, Italy and Romania), and by IR No 952 406 (the Benelux, Germany, France and Italy). The applicant was informed, when the opposition was notified, of the territorial extent of the earlier rights and had ample opportunity to argue thereon.

17. The request for suspension is, accordingly, rejected.

On the merits of the opposition and appeal

18. The opponent claimed two grounds for refusal, namely Article 8(1)(b) CTMR (likelihood of confusion) and Article 8(5) CTMR (infringement of reputation) and based the opposition on three earlier rights: IR No 944 740, IR No 952 406 and French registration No 3 457 452.

19. The Opposition Division dismissed, pursuant to Rule 20(1) CTMIR, the opposition based on the French registration on the ground that the evidence showed, as the owner, a person (Christian Assoun) different from the opponent without the latter explaining the discrepancy.

20. The opponent responded (see letter dated 18 February 2014) that there were ‘natural rights and links’ between the opponent and Mr Assoun, insofar as the latter is the owner of the former. The opponent added that these links were ‘easy to demonstrate’ but merely submitted a fresh copy of the certificate of registration showing what the Office already knew, i.e. that the French mark stands in the name of Mr Assoun, and not the opponent, who is Glycan Finance Corporation Ltd.

21. Glycan Finance Corporation Ltd. and Christian Assoun are, legally, distinct persons even though they have links. Since the opposition was submitted in the name and on behalf of the company, the marks on which it is based must also stand in the name of the company. The opposition (based on the French registration) should have been filed in Mr Assoun’s name. Alternatively, the opponent should have claimed, by checking the corresponding box on the notice of opposition, to be acting as an ‘authorised licensee’.

22. The Board notes, in this respect, that this box was left blank in the notice of opposition attached to the letter of 6 June 2012. This means that the company acted in its name as owner of the earlier mark, which is not the case.

23. In addition, the Board notes that the notice of opposition (see sections ‘Identification of the earlier mark’ and ‘Explanation of grounds’) did not even identify the French registration as one of the rights on which the opposition was based. The notice of opposition did not comply with Rule 15(2)(b)(i) CTMIR.

24. In any event, since the discrepancy between the name of the owner of the French mark and the name of the opponent has not been cured, the decision of the Opposition Division must be upheld to that extent.

25. The Board will, therefore, begin by assessing a likelihood of confusion as regards IR No 944 740. As mentioned earlier, this IR enjoys protection in France, Italy and Romania for ‘chemical goods’ in Class 1, ‘pharmaceutical products’ in Class 5 and ‘beers’ in Class 32.

Article 8(1)(b) CTMR

Relevant public

26. The public targeted by the goods in question includes the end consumer of pharmaceutical goods and beer, and professional consumers of chemical goods. The degree of attention depends on the nature of the goods and the profile of the consumer. Consumers of beer are deemed to have an average degree of attention. Consumers of products that affect their health are deemed to have a greater degree of attention. Professional consumers are deemed to have a high degree of attention.

27. The consumers to be considered are those located in France, Italy and Romania.

Comparison of the goods

28. In its response to the opposition (letter dated 28 March 2013, page 4), the applicant indicated that it was ‘superfluous’ to compare the goods. No comment as regards the comparison in the contested decision was made in its statement of grounds of appeal (letter dated 26 March 2014).

29. The Board will, nevertheless, compare the goods as this is a necessary step in order to assess a likelihood of confusion.

30. The contested goods in Class 1 are identical to the goods of the earlier mark.

31. The contested goods in Class 3 ‘toilet preparations; cosmetic preparations; preparations for the care of the skin and hair; hair lotions containing organic silicon; anti-aging creams; soaps, dentifrices, all containing organic silicon; preparations containing organic silicon for the care of the body, skin and hair’ were considered, in the contested decision, similar or (as far as hair lotions are concerned) similar to a low degree to the earlier mark’s pharmaceutical goods. Among the reasons given was the fact that pharmaceutical products may include skin or hair preparations with medical properties, that they may coincide as regards purpose, that they share the same distribution channels (pharmacies), that they target the same public and that they are often manufactured by the same companies. The applicant did not object to these findings. In the Board’s opinion, the findings are well reasoned and may be endorsed.

32. The contested goods in Class 3 ‘cleaning preparations and perfumery, all containing organic silicon’ were found dissimilar. In the Board’s opinion, ‘cleaning preparations’ is an expression which is broad enough to accommodate ‘soaps’ or ‘preparations for the care of the body’ – which were found similar – and therefore they should also be considered as similar to the earlier mark’s goods, though the degree of similarity is low.

33. In the Board’s opinion, ‘perfumery containing organic silicon’ may be considered similar, to some extent to ‘pharmaceutical preparations’ and ‘chemical products’ because the presence of organic silicon will be perceived by reasonably observant consumers as a chemical substance and an ingredient that may have positive effects on health. The file contains evidence that products based on organic silicon are promoted on the basis of their positive effects on health. This kind of functional perfumery may, therefore, be distributed to the public through pharmacies or parapharmacies, similarly to pharmaceutical preparations. Thus, there is a degree of similarity between the goods at issue, though the similarity is low.

34. The contested goods in Class 5 were considered, in the contested decision, as identical except ‘nutritional food supplements and food supplements containing organic silicon’, which were found similar. These findings were not contested by the applicant and are hereby endorsed by the Board.

35. The contested goods in Class 32 ‘non-alcoholic drinks; drinks containing organic silicon’ are worded broadly enough to include the earlier mark’s ‘beers’ and may thus be considered identical, rather than merely similar. For example, non‑alcoholic beer may simultaneously be called ‘beer’ or a ‘non-alcoholic drink’. In addition, there is evidence in the file that beer containing organic silicon is available in the marketplace: for this reason, the wording ‘drinks containing organic silicon’ includes ‘beers’.

36. The contested goods in Class 32 ‘preparations for making non-alcoholic drinks; preparations containing organic silicon for use in making beverages’ are similar to ‘beers’ because they may be used to prepare beers, are sold through the same channels and usually have the same origin. This finding, moreover, was not contested by the applicant.

37. In conclusion, all the contested goods are identical or similar to the earlier mark’s goods.

Comparison of the marks

38. The comparison must be made on the basis of the likely perception of the marks by the relevant public in the relevant territories. The marks to be compared are, on one hand, a figurative sign containing some words, abbreviations and a device and, on the other hand, a long sequence of words and combinations of numerals and letters, some of which are repeated.

39. Though the general configuration of the two marks is different, the elements that will enable reasonably observant consumers to identify the signs when buying the goods in the marketplace are, in the case of the later mark, ‘SILICIUM ORGANIQUE’ and ‘G5’ and, in the case of the earlier mark, ‘SILICIUM ORGANIQUE’, ‘G5’ and ‘GLYCAN’. The remaining elements in the two marks will be perceived as non-distinctive, because they represent, respectively, a chemical molecule (in the applicant’s mark) and a chemical formula (in the opponent’s mark) that supposedly represents an ingredient of the products or looks like an abbreviation (LLR-G5) which is written in smaller letters and may easily be perceived as purely technical information.

40. It follows that the former elements are those which must be given a higher weight in the comparison. The applicant argues that ‘SILICIUM ORGANIQUE’ must be ‘discounted’ from the comparison on the grounds that it is purely descriptive. According to case-law, the descriptive content of an element of the marks may not exclude it automatically from the comparison (21/01/2015, T‑587/13, cat&clean, EU:T:2015:37). This is particularly true in respect of the applicant’s mark, where the remaining text elements (‘G5’, ‘LLR-G5’) seem non-distinctive technical abbreviations. The applicant’s argument would have been more convincing if its mark included an element that consumers could immediately recognise as an indication of business origin. In the Board’s opinion, the only reasonable way to refer in ordinary trade circumstances to the applicant’s mark is by mentioning the expression ‘SILICIUM ORGANIQUE’, in addition to ‘G5’ and perhaps ‘LLR‑G5’. Therefore, it would be artificial to ignore that expression when comparing the mark to the earlier one.

41. It is on the basis of the above preliminary findings that the marks must be compared.

42. The marks are visually similar for the following reasons. Though the later mark is a figurative sign containing various text and coloured device elements, whereas the earlier mark is a long sequence of words, letters and numerals, the elements that are most likely to attract the consumer’s visual attention are identical: ‘SILICIUM ORGANIQUE G5’. These elements are most likely to attract their attention for two reasons. The first is that they appear in the two marks in the same place, that is, on the top or left of the marks, i.e. the place where consumers start to read. The second reason is that the three elements are displayed in exactly the same sequence, i.e. ‘SILICIUM’ in first position, ‘ORGANIQUE’ in second position and ‘G5’ in third position. In the Board’s opinion, it is the beginnings of the two marks – which are identical – that will visually strike consumers at first glance. The degree of similarity, though, is only average because the identity of the initial three elements is balanced by the presence, in the marks, of differing text (‘GLYCAN’, ‘SI’, ‘LLR G5’), device elements and colours.

43. The aural similarity of the marks is, in the Board’s opinion, high because consumers are most likely to only utter the complete words that appear in the marks, namely ‘SILICIUM’ and ‘ORGANIQUE’, and the element ‘G5’, which are easy to single out and pronounce. In the earlier mark, the word ‘GLYCAN’ is likely to be pronounced, too. However, consumers are unlikely to utter, in the course of trade, the rest of the text elements in the two marks, because they will perceive them as purely technical, non-distinctive, or repetitive matter (‘LLR-G5’, ‘5-SI’). If they want to distinguish goods on the market on the basis of the marks, they will most likely quote ‘SILICIUM ORGANIQUE’ or ‘SILICIUM ORGANIQUE G5’ or ‘SILICIUM ORGANIQUE G5 GLYCAN’. Common experience shows that consumers who are faced with marks containing long sequences of text elements have a natural tendency to shorten them to the elements that they find easy to identify and remember. These elements are the same in the two marks, namely ‘SILICIUM ORGANIQUE G5’.

44. As regards the conceptual comparison of the marks, the Board notes that French‑speaking consumers, who are part of the relevant public as regards France, Belgium and Luxembourg, will immediately identify ‘SILICIUM ORGANIQUE’ as French words. Those consumers will understand that this expression designates a chemical substance. To that extent, the two marks are conceptually identical. The remaining elements in the two marks do not have, according to the information in the file, any precise meaning and their conceptual content is accordingly neutral. A similar perception is likely as regards Italian and Romanian consumers because ‘SILICIUM ORGANIQUE’ is easily understood as the scientific name of a substance and that name closely resembles the names in Italian and Romanian (silicio organico and siliciu organic). There is no information and evidence in the file as regards the conceptual perception of the expression in Germany and the Benelux, i.e. by German speakers in Germany and Belgium as well as Dutch speakers in the Netherlands. However, according to the translation into German (organisches Silicium) and into Dutch (organisch silicium), it is likely that German and Dutch speakers of the relevant territory (Germany, Belgium, Luxembourg and Netherlands) will understand the meaning of the French expression ‘Silicium organique’ because the words in German and Dutch of these expressions are sufficiently similar to the French version (i.e. ‘SILICIUM’ closely resembles the German word ‘Silicium’ and the Dutch word ‘silicium’ moreover the French word ‘organique’ is very close to the German and Dutch adjective ‘organisch’) for the whole expression to convey the same conceptual connotation that it conveys to French, Italian and Romanian speakers. In other words, the conceptual perception of the expression ‘SILICIUM ORGANIQUE’ will not be dissimilar, in spite of the different languages, in the various linguistic areas concerned, namely: France, Germany, Belgium, the Netherlands, Italy, Romania and Luxembourg.

Overall assessment of the likelihood of confusion

45. As regards the entirety of the contested goods, confusion is likely for the following reasons. The fact that the dominant elements in the applicant’s mark, namely ‘SILICIUM ORGANIQUE G5’, reproduce, moreover in the same language and in the same sequence, the first three elements of the earlier mark is an important factor of similarity in the marks: consumers, particularly if French‑speaking, will no doubt be struck by this coincidence, whether they have a high or lower degree of attention.

46. The circumstance that the expression ‘SILICIUM ORGANIQUE’ is, as alleged by the applicant, descriptive of a substance does not exclude the possibility of confusion because of its prominence in the two marks: it is the only element, in the later mark, that does not look like a technical abbreviation and it will therefore be used by the consumers as a tool to identify the goods on the market. The same element is also the one that appears at the left of the earlier mark, which is the part which is read and remembered first; the fact that the mark is unusually long, technical and repetitive will induce consumers to focus on the beginning, which is formed by two simple words. Those two simple words are exactly those which appear as the ‘title’ of the later mark.

47. The fact that the same letter/numeral combination (G5) appears in the two marks, moreover immediately after the expression ‘SILICIUM ORGANIQUE’, is an additional striking feature that may cause confusion.

48. The presence of differing elements in the two marks may not be ignored but must be considered in the context of imperfect recollection. Consumers, whether or not highly observant, do not always see trademarked products side by side and have, thus, to rely on imperfect recollection. Especially when the marks have an unusually complex structure and contain many elements, consumers will naturally focus on elements that appear at the beginning and are easy to remember. These elements are ‘SILICIUM ORGANIQUE’ because they make sense (contrary to the abbreviations and/or complex formulas and repeated elements) and the element ‘G5’ which is simple enough to notice and remember. The presence, in the earlier mark, of the name ‘GLYCAN’, will not be ignored but does not erase the overall impression of similarity because it appears in fourth position and because of the natural tendency of consumers to shorten long marks to elements that are perceived as easier to quote and remember, namely ‘SILICIUM ORGANIQUE’ and ‘G5’.

49. Bearing in mind the similarity between the marks and the above remarks, a finding of a likelihood of confusion appears justified as regards the contested goods. This applies to those in Class 1, that typically target professional consumers in the chemical sector, because even if those consumers identify ‘SILICIUM ORGANIQUE’ as a descriptive indication, this expression is the one, for the reasons given in the preceding paragraphs, that will attract their attention more than the remaining elements and which they will use to identify the two marks. The Board is aware of the fact that a likelihood of confusion was ruled out by the Opposition Division in respect of the latter goods on the ground of the high capacity of discernment by professional consumers of chemical goods. In the Board’s opinion, however, this finding is unconvincing. As explained earlier, the descriptive connotation of the expression ‘SILICIUM ORGANIQUE’ is not a sufficient factor for excluding confusion because that expression is the only element that consumers, even if professional, may reasonably use to identify and quote, in trade, the mark (the remaining elements being meaningless letters and numerals). Therefore, the fact that this expression appears in the two marks, (i) in the same language, (ii) in the same position within the signs and (iii) followed by another identical element (G5) is a strong factor of confusion – or association – even for discerning consumers.

50. For the above reasons, the opposition under Article 8(1)(b) CTMR must be upheld for all the contested goods, with the exception of ‘perfumery, all containing organic silicon’.

51. The Board must thus determine whether the opposition against ‘perfumery, all containing organic silicon’ may succeed under Article 8(5) CTMR.

Article 8(5) CTMR

52. The opposition must be dismissed as manifestly unfounded for the following reasons.

53. Pursuant to Article 76(1) CTMR, the Office is restricted, in the examination of relative grounds of refusal (Article 8(5) CTMR is one of them), to the facts, arguments and evidence provided by the parties.

54. Therefore, the onus was on the opponent to submit facts, arguments and evidence in support of its claim that the CTM application would infringe Article 8(5) CTMR.

55. The Board notes that the opponent merely claimed (see letter of 6 June 2012) that the applicant filed the contested application in ‘bad faith’ within the meaning of Article 52(1)(b) CTMR.

56. Such a claim is manifestly unable to support an opposition based on the infringement of Article 8(5) CTMR.

57. In the absence of any fact, argument and evidence supporting the opposition, the same must be dismissed as unfounded.

Costs

58. Since the opponent was not represented professionally, there are no costs that the applicant should be order to reimburse within the meaning of Article 85 CTMR.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Upholds partially the request made under Article 8(3) BOA-RP and accordingly rejects the CTM application also for ‘chemicals and chemical products, not including resins and hardeners for resins, for use in industry; organic silicon for use in industry’ in Class 1 and ‘cleaning preparations, all containing organic silicon’ in Class 3;

3. Dismisses the request made under Article 8(3) BOA-RP for the rest.

Signed Th. M. Margellos

Signed C. Rusconi

Signed M. Bra

Registrar: Signed H.Dijkema