OPPOSITION No B 2 166 125

Petrochem - Produtos Químicos de Portugal, Lda., Edifício Petrechem, Rua Cidade de Setúbal, Zona Industrial de Frielas, 2670-291 Frielas, Portugal (opponent), represented by João Carlos Sardiña de Barros, Rua do Carmo, Nº 51 - 7º A, 1200-093 Lisbonn, Portugal (professional representative)

a g a i n s t

Petroguss Forschungs- und Entwicklungs-GmbH & Co. KG, Lingeweide 11, 40489 Düsseldorf, Germany (applicant), represented by Paul & Albrecht Patentanwaltssozietät, Hellersbergstr. 18, 41460 Neuss, Germany (professional representative).

On 27/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 166 125 is partially upheld, namely for the following contested goods:

Class 3: Bleaching preparations and other substances for laundry use; Cleaning preparations; Soaps; Cleaning preparations.

Class 4: Dust absorbing, wetting and binding compositions.

2. European Union trade mark application No 11 471 208 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 471 208 ‘Petroclean’ (word mark). The opposition is based on Portuguese trade mark registration No 351 742 ‘PETROCLEAN’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the earlier trade mark.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 26/02/2013. The opponent was therefore required to prove that the earlier trade mark was put to genuine use in Portugal from 26/02/2008 to 25/02/2013, inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Industrial detergents (not for use during the manufacturing process).

Class 5: Germicides; fungicides.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 09/01/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 14/03/2014 to submit evidence of use of the earlier trade mark. On 11/03/2014, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

1) Photograph of the opponent’s industrial plant with the name ‘petrochem’.

2) A copy of the product’s brochure for 2008 and its translation into English. It makes reference to ‘PETROCLEAN-GF’ and describes it as a detergent/germicide/fungicide, which cleans, disinfects and deodorises in one operation and is used in various industrial fields.

3) A copy of the product’s brochure for 2012 and its translation into English. It makes reference to ‘PETROCLEAN-GF’ and describes it as a detergent/germicide/fungicide, which cleans, disinfects and deodorises in one operation and is used in various industrial fields.

4) Photography of the product’s container with the trade mark ‘PETROCLEAN-GF’ and the indication that it is a detergent/germicide/fungicide.

5) Ten invoices addressed to various clients in Portugal in 2008, seven of which are dated within the relevant period and demonstrate sales of more than 1 025 litres of ‘PETROCLEAN-GF’ for more than EUR 8 400 (without VAT).

6) Ten invoices addressed to various clients in Portugal in 2009. They demonstrate sales of 885 litres of ‘PETROCLEAN-GF’ for more than EUR 6 800 (without VAT).

7) Ten invoices addressed to various clients in Portugal in 2010. They demonstrate sales of 920 litres of ‘PETROCLEAN-GF’ for more than EUR 7 000 (without VAT).

8) Ten invoices addressed to various clients in Portugal in 2011. They demonstrate sales of 680 litres of ‘PETROCLEAN-GF’ for more than EUR 5 600 (without VAT).

9) Ten invoices addressed to various clients in Portugal in 2012. They demonstrate sales of 1 235 litres of ‘PETROCLEAN-GF’ for more than EUR 7 800 (without VAT).

10) Ten invoices addressed to various clients in Portugal in 2013, three of which are dated within the relevant period and demonstrate sales of more than 155 litres of ‘PETROCLEAN-GF’ for more than EUR 1 000 (without VAT).

The invoices and the product’s brochure demonstrate that the place of use is Portugal. This can be inferred from the language of the documents (Portuguese), the currency mentioned (euros) and the addresses in the invoices (in Portugal). Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope and the duration of use.

The evidence shows that the mark has been used as ‘PETROCLEAN-GF’ for all the goods for which the mark is registered.

Finally, it is clear from the documents submitted that the mark has been used in a form that does not alter the distinctive character of the mark as registered (see Article 15(1), second subparagraph, point (a) EUTMR, read in conjunction with Article 42(2) and (3) EUTMR). Although the actual form used (i.e. ‘PETROCLEAN-GF’) differs from the registered form, ‘PETROCLEAN’, this use does not alter the distinctive character, since the first and longer part of the sign, namely ‘PETROCLEAN’, will be the element of the mark that will be remembered by the public. The additional element ‘-GF’ will be perceived as a specification of or a reference for the product.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

DOUBLE IDENTITY and LIKELIHOOD OF CONFUSION – ARTICLE 8(1) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if it is identical to the earlier trade mark and if the goods or services for which registration is sought are identical to the goods or services for which the earlier mark is protected.

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.

Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(b) is the only ground claimed but identity between the signs and the goods/services is established, the Office will examine the case under Article 8(1)(a) EUTMR.

1. The goods

The goods on which the opposition is based and for which use has been proven are the following:

Class 3: Industrial detergents (not for use during the manufacturing process).

Class 5: Germicides; fungicides.

In its observations, the applicant argues that its business activities are in the field of the moulding industry and manufacturing technology, while the opponent’s goods are used only as disinfectants for germicides and fungicides and are limited to industrial detergents that are not intended for use during manufacturing processes.

The Opposition Division notes that, for the contested trade mark, the comparison of the goods must be based on the wording indicated in the lists of goods for which registration is sought. The actual or intended use of the contested goods, as brought forward by the applicant, is not relevant for the comparison of goods.

The contested goods are the following:

Class 1: Chemicals used in industry, science; In particular tempering preparations, deformation agents for metal processing, dispersants, mould-release preparations, degreasing agents, fireproof preparations, soldering or brazing fluxes, deformation preparations and additives for casting, binding preparations and foundry moulding preparations, metal hardening preparations, adhesives used in industry, chemical cooling agents, separating agents, oil dispersants, oil purifying agents, metal tempering preparations, auxiliary fluids for use with abrasives.

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Cleaning preparations.

Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Cooling lubricants, in particular water-soluble.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’s list of goods in Class 1, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

It is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 1

The contested chemicals used in industry, science; in particular tempering preparations, deformation agents for metal processing, dispersants, mould-release preparations, degreasing agents, fireproof preparations, soldering or brazing fluxes, deformation preparations and additives for casting, binding preparations and foundry moulding preparations, metal hardening preparations, adhesives used in industry, chemical cooling agents, separating agents, oil dispersants, oil purifying agents, metal tempering preparations, auxiliary fluids for use with abrasives are not stand-alone goods, but chemicals for use in further manufacturing as ingredients of other goods. They differ from the opponent’s goods, which are not intended for use as ingredients in other products and are used for cleaning purposes and/or to kill germs and fungi. The contested goods in Class 1 have a different nature and purpose from the opponent’s goods (industrial detergents (not for use during the manufacturing process) in Class 3 and germicides; fungicides in Class 5). Moreover, they are neither complementary nor in competition and they do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

Contested goods in Class 3

A detergent is ‘1) a water-soluble cleansing agent that combines with impurities and dirt to make them more soluble and differs from soap in not forming a scum with the salts in hard water. 1.1) Any additive with an action similar to a detergent, e.g., an oil-soluble substance that holds dirt in suspension in lubricating oil’ (information extracted from the Oxford Dictionary Online on 19/05/2015).

The contested cleaning preparations (repeated) are agents used to eliminate dirt, dust, stains and bad smells from different surfaces and objects in a household, office or industrial building. They are a broad category that includes the opponent’s industrial detergents (not for use during the manufacturing process). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s industrial detergents (not for use during the manufacturing process).

The contested other substances for laundry use include laundry detergent, or washing powder. Therefore, these goods overlap with the opponent’s industrial detergents (not for use during the manufacturing process) in the same class. These goods are identical.

The contested soaps are cleaning or emulsifying agents made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring and perfume. Soaps are used for cleaning purposes. They are similar to the opponent’s industrial detergents (not for use during the manufacturing process), as they coincide in their purposes, producers and publics. These goods are also in competition.

The contested bleaching preparations contain bleach, which is a strong chemical product used for cleaning, removing colour or killing germs (Longman Dictionary of Contemporary English online). To this extent their purpose is very similar to that of fungicides; vermicides in Class 5, which are also intended to kill micro-organisms. They also have the same nature (chemical products). The goods are similar to a low degree.

The contested polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. The contested scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. The contested abrasive preparations are substances or materials such as sandpaper, pumice or emery, used for cleaning, grinding, smoothing or polishing. Although all these products are agents that might be used to clean, they have different natures, are used in different ways and are usually not interchangeable. Therefore, they are considered dissimilar to the opponent’s goods (industrial detergents (not for use during the manufacturing process) in Class 3 and germicides; fungicides in Class 5).

Contested goods in Class 4

The contested dust absorbing, wetting and binding compositions are preparations intended to supress and control dust in industrial settings. They have the same purpose as the opponent’s industrial detergents (not for use during the manufacturing process) in Class 3 which also combine with impurities and dirt to make them more soluble. They might be in competition and may target the same public. These goods are similar.

The contested industrial oils and greases are substances used to reduce friction between surfaces in mutual contact, which ultimately reduces the heat generated when the surfaces move. They may also have the function of transmitting forces, transporting foreign particles or heating or cooling surfaces. The contested lubricants are materials, usually oils, used to lubricate machinery or fluids, which makes motion or action smooth or removes friction. The contested cooling lubricants, in particular water-soluble fall under the broader term of lubricants. These goods have a different nature and purpose from the opponent’s goods (industrial detergents (not for use during the manufacturing process) in Class 3 and germicides; fungicides in Class 5). Moreover, they are neither complementary nor in competition, and they do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar to the opponent’s goods.

2. The signs

PETROCLEAN	Petroclean
Earlier trade mark	Contested sign

As both signs are word marks, it is irrelevant whether they are written in lower case or upper case letters or a combination of both (31/01/2013, T‑66/11, Babilu, § 57). Therefore, the signs are identical.

3. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar.

The signs are identical.

For the identical goods, namely bleaching preparations; cleaning preparations (repeated), in Class 3 the opposition must be upheld in accordance with Article 8(1)(a) EUTMR, since the requirement of identity of signs and identity of goods is fulfilled.

Furthermore, given the identity between the signs and the similarity between some of the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods, namely other substances for laundry use; soaps in Class 3 and dust absorbing, wetting and binding compositions in Class 4. Due to the identity between the marks, a likelihood of confusion exists also in relation to the goods for which only a low degree of similarity has been found.

As regards the remaining dissimilar goods, one of the necessary conditions of Article 8(1)(a) and (b) EUTMR, namely the identity or similarity between the goods and services, is not fulfilled and the opposition must be rejected, even for identical trade marks.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Dorothée SCHLIEPHAKE

Julia SCHRADER

Jessica LEWIS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.