OPPOSITION No B 2 448 804

Synthecoat S.L., Industria 7-13, 08120 La Llagosta (Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Pivema S.A., Ctra. Sentmenat 77, 08184 Palau Solita i Plegamans (Barcelona), Spain (applicant), represented by J.M. Toro S.L., Viriato 56 - 1º izda, 28010 Madrid, Spain (professional representative).

On 07/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 448 804 is partially upheld, namely for the following contested goods:

Class 1: Unprocessed artificial resins, unprocessed plastics; Adhesives used in industry; In particular liquid preparations for the formation of flexible sheets for application 'in situ', for waterproofing in the field of building construction.

Class 2: Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Raw natural resins.

Class 17: Rubber, gutta-percha, gum; Plastics in extruded form for use in manufacture; insulating materials; And especially, Insulating paints.

2. European Union trade mark application No 13 238 522 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 13 238 522. The opposition is based on European Union trade mark registration No 4 476 883. 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 trade mark on which the opposition is based, that is European Union trade mark No 4 476 883.

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 26/09/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union, from 26/09/2009 to 25/09/2014 inclusive. Furthermore, the evidence must show use of the trade mark for goods on which the opposition is based, namely the following:

Class 1: Water-soluble epoxy resins for coverings.

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 03/07/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 08/09/2015 to submit evidence of use of the earlier trade mark. On 07/09/2015, after the opponent’s request, the original time limit was extended until 08/11/2015. On 06/11/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• Invoices: In Enclosure 1, the opponent provides examples of invoices which contain references to the opponent’s sign ACCUAPOX.

• Brochures: A brochure in English language referring to the ‘opponent’s products – synthetic resins (Enclosure 2). According to the opponent’s product catalogue, ‘ACCUAPOX’ is the so-called product family name.

• Technical data sheet: In Enclosure 3, the opponent provides a data sheet, mentioning the technical characteristics of a water soluble epoxy acrylic resin under the name ‘ACCUAPOX 6550’.

• Photos: In enclosure 4, photos of the opponent’s products.

• Sales figures: In Enclosure 5, sales figures.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The submitted invoices, both those that are dated within the relevant period and those that are dated after 25/09/2014, show that the goods are directed to the European Union. This can be inferred from the language of the documents, which, in principle, is ‘English’, the currency mentioned (‘Euro’) and the opponent’s and clients’ addresses. The invoices prove a frequent commercial relation between the opponent and its clients. In addition, the territorial scope of use is also inferred from the English language used for the Brochure (‘Enclosure 2’) and the Technical Data Sheet (‘Enclosure 3’) as well as from the Contact details appearing in the latter documents where the country and the country dialling code are also mentioned. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the sales figures in Kilos in conjunction with the unit prices appearing in the invoices permit an estimation of the commercial volume, when at the same time the Technical Data Sheet and the photos of the product show that the opponent has actually used the product in the relevant market.

Taking into account that use of the mark needs not be quantitatively significant for it to be deemed genuine, it is considered that the documentation provided in the case at hand is enough to prove a sufficient extent of use of the earlier trade mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier mark is used in a form that contains apart from the mark ‘ACCUAPOX’ the numbers 6550 (‘ACCUAPOX 6550’) and 6552 (‘ACCUAPOX 6552’). This additional numbering does not alter the distinctive character of the earlier mark since the distinctive element remains the word ‘ACCUAPOX’ as referring to the family product name and the numbering can be seen as variants of the same ‘ACCUAPOX’ product, according to the Brochure (‘Enclosure 2’).

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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.

1. The goods

The goods on which the opposition is based are the following:

Class 1: Water-soluble epoxy resins for coverings.

The contested goods are the following:

Class 1: Chemicals used in science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry; In particular liquid preparations for the formation of flexible sheets for application 'in situ', for waterproofing in the field of building construction.

Class 2: Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants; Mordants; Raw natural resins; Metals in foil and powder form for painters, decorators, printers and artists.

Class 17: Rubber, gutta-percha, gum, asbestos, mica; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, not of metal; And especially, Insulating paints.

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

In the present case, the terms ‘in particular’ and ‘especially’, used in the applicant’s list of goods, should be interpreted according to their authentic meaning in the language in which the application for the EU trade mark was filed (Article 120(3) EUTMR). Therefore, according to the Spanish list of goods and services, the terms ‘in particular’ and ‘especially’ indicate that the goods applied for, that is liquid preparations for the formation of flexible sheets for application 'in situ', for waterproofing in the field of building construction and insulating paints, are not just examples of items included in a general category, but specific additional products that fall under the scope of protection of the contested trade mark.

As a preliminary remark, 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 unprocessed artificial resins are polymers that are generally viscous and sticky. Artificial resins include polyesters and epoxies. Therefore, the opponent’s water-soluble epoxy resins for covering are included in the broader category of the contested unprocessed artificial resins. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested adhesives used in industry are made from chemicals that have been processed through the necessary chemical reactions to produce the adhesive. The contested in particular liquid preparations for the formation of flexible sheets for application 'in situ', for waterproofing in the field of building construction are chemical preparations that form a sheet-like waterproofing material. The term ‘in particular’, as already mentioned, is used for specifying the particular goods for which protection is sought according to the authentic language of the EU trade mark application. Epoxy resins are thermosetting materials used for covering and known for their high adhesive properties. Therefore, the contested adhesives used in industry and in particular liquid preparations for the formation of flexible sheets for application 'in situ', for waterproofing in the field of building construction are similar to a high degree to the opponent’s water-soluble epoxy resins for covering as they might coincide in nature, purpose and methods of use. They might be manufactured by the same undertakings. They coincide in the distribution channels and relevant consumers.

The contested unprocessed plastics are synthetic materials that consist of polymers and are moulded during manufacture. Plastics are made from synthetic resins. Therefore, the contested unprocessed plastics are similar to an average degree to the opponent’s water-soluble epoxy resins for covering as they coincide in nature, purpose and methods of use. They might be manufactured by the same undertakings. They coincide in the distribution channels and relevant consumers.

The contested chemicals used in science and photography, as well as in agriculture, horticulture and forestry are chemical substances intended to be used for different purposes such as for processing photographic films, for sterilizing/fertilizing compost, for use in herbicidal/pesticidal compositions and for use in the therapy of environmental damage on plants. The contested manures are material, esp. chemical fertilizers, used to fertilize lands. The contested fire extinguishing compositions are chemicals used to extinguish or control fires. The contested tempering and soldering preparations are used for hardening of a metal by means of heat treatment and for joining two metal surfaces. The contested chemical substances for preserving foodstuffs are used for preventing the decomposition or chemical change of foodstuffs. The contested tanning substances are used in the process of treating skins and hides of animals to produce leather. Therefore, the mere fact that the opponent’s water-soluble epoxy resins for covering are also chemical products does not make them similar to the aforementioned applicant’s goods. Epoxy resins are thermosetting materials known for their high adhesive properties and are used in the formulation of adhesives, sealing liquids, cold solders, castings, laminates and coatings. It is apparent that the goods under comparison have different purpose and are targeted at different public. They have different channels of distribution and method of use, without them being in competition with each other or complementary. Therefore, the aforesaid contested goods and the opponent’s water-soluble epoxy resins for covering are dissimilar.

Contested goods in Class 2

The contested paints, varnishes, lacquers; preservatives against rust and against deterioration of wood are materials used to give a protective and decorative finish to surfaces. Therefore, the contested goods are similar to a high degree to the opponent’s water-soluble epoxy resins for covering as they might coincide in nature, purpose and methods of use. They might be manufactured by the same undertakings. They coincide in the distribution channels and relevant consumers.

The contested raw natural resins are substances used in paints, varnishes, in decorative wear and may serve the same purpose with the opponent’s water-soluble epoxy resins for covering in Class 1, as they can be used as coatings and protection for surfaces. The goods target the same relevant public and may be produced or provided by the same undertakings. Therefore, they are similar.

The contested. colorants are substances that impart colour to another material or mixture. The contested mordants are substances used in dyeing to fix certain dyes (mordant dyes) in cloth. The contested metals in foil and powder form for painters, decorators, printers and artists are materials used for producing printed matter or works of art. Therefore, there is a substantial difference in the functioning principle of these goods as compared to the opponent’s water-soluble epoxy resins for covering in Class 1. The contested goods are finished, they follow different distribution channels and are purchased by a different public. Therefore, the contested goods are dissimilar to the goods of the earlier trade mark.

Contested goods in Class 17

The contested rubber is a solid substance that upon vulcanization becomes elastic. Rubber is useful as an adhesive, a coating composition, a fiber, a molding compound, and an electrical insulator. The contested gutta-percha is an excellent non-conductor and is often employed in insulating cables. Therefore, the contested goods are similar to the opponent’s water-soluble epoxy resins for covering as they might coincide in purpose and methods of use. They might be manufactured by the same undertakings. They coincide in the distribution channels and relevant consumers.

The contested gum is an adhesive made from plant exudates or other sticky substance. Therefore, the contested good is similar to the opponent’s water-soluble epoxy resins for covering as they might coincide in purpose and methods of use. They might be manufactured by the same undertakings. They coincide in the distribution channels and relevant consumers.

The contested plastics in extruded form for use in manufacture can be formed or molded under heat and pressure in its raw state and machined to high dimensional accuracy, trimmed, and finished in its hardened state. Being a general term the contested good can be used for different purposes, including for covering. Therefore, the contested good is similar to the opponent’s water-soluble epoxy resins for covering as they might coincide in purpose and methods of use. They might be manufactured by the same undertakings. They coincide in the distribution channels and relevant consumers.

The contested insulating materials are various kinds of substances, materials or items used as a barrier to prevent the passage of air, water, gas, fire, etc. The contested especially insulating paints are paints mainly used for preventing or reducing the transmission of electricity, heat, water or sound. The term ‘especially’, as already mentioned, is used for specifying the particular goods for which protection is sought according to the authentic language of the EU trade mark application. The aforesaid contested goods can be used for covering and are, therefore, similar to the opponent’s water-soluble epoxy resins for covering as they might coincide in purpose and methods of use. They might be manufactured by the same undertakings. They coincide in the distribution channels and relevant consumers.

The contested flexible pipes, not of metal are long tubes used to convey water, oil, gas etc by surrounding them and preventing any accidental leak. The contested asbestos is a mineral separable into long and thin fibers and used extensively in building work because of its qualities of resistance to flame and chemicals. The contested mica is a lustrous rock-forming mineral that due to its resistance to electricity and heat it is used as dielectrics, in heating elements, etc. The contested packing, stopping materials may include various articles and materials for cushioning, stuffing, stopping. The contested goods do not coincide in purpose with the opponent’s water-soluble epoxy resins for covering, they follow different distribution channels and are purchased by a different public. Therefore, the contested goods are dissimilar to the goods of the earlier trade mark.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, some of the goods, found to be identical or similar (to various degrees), target the public at large (e.g. paints, varnishes, lacquers in Class 2 may be provided to the general public) and some target professionals with specific knowledge or expertise in, inter alia, chemical products (e.g. adhesives used in industry in Class 1 may be provided to business customers with specific business needs). The relevant public’s degree of attention will vary from average to high, depending on the exact nature of the goods and their impact on the economic activities of the business customers in question.

3. The signs

ACCUAPOX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

In the present case, the earlier mark is a word mark consisting of the word ‘ACCUAPOX’, which does not have a meaning as a whole for the relevant public and is therefore distinctive for the goods applied for, even though the letters ‘ACCUA’ are likely to be perceived by the Spanish-speaking public as referring to the Spanish word ‘agua’ that means water. When perceived with the above meaning, the letters ‘ACCUA’ may be associated with goods that are able to be dissolved in water, such as the water –soluble epoxy resins for covering and will be considered weak word elements as regards the goods concerned. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative mark consisting of the words ‘PIVEMA AQUAPOX’. As regards the possible meaning of the word elements, the word ‘PIVEMA’ has no apparent meaning and, as in the earlier mark, the sequence of letters ‘AQUA’ are likely to be perceived as referring to the Spanish word ‘agua’ that means water. When perceived with the above meaning, the letters ‘AQUA’ may be associated with goods that are used for protection from water, such as the contested liquid preparation for the formation of flexible sheets for application ‘in situ’, for waterproofing in the field of building construction. Therefore, the letters ‘AQUA’ will be considered weak word elements as regards the goods concerned. Nevertheless, both the word elements ‘PIVEMA AQUAPOX’ don’t have as a whole a meaning for the Spanish-speaking public. The word ‘PIVEMA’ is depicted in bold blue title case letters and in a rather standard typeface apart from the letter ‘P’ that stands out as a figurative device in the beginning of the mark in a size visibly larger than the other letters of the word. The word ‘AQUAPOX’ is depicted in bold blue colour and lowercase letters and it is positioned on a smaller scale below the letters ‘ivema’. At the end of the mark, there is a figurative device consisting of a dwarf dressed in red and holding a brush on his right hand and a bucket on his left hand. These figurative elements, that is the brush and the paint bucket could be considered as alluding to goods such as paints and varnishes. The two figurative devices at the beginning and the end of the mark are the most dominant due to their size and colour difference, as far as the second figurative element is concerned. However, the denominative elements, the letters ‘(P)ivema’ and ‘aquapox’ situated in the centre of the mark will be the ones most likely to be remembered by the relevant consumers, since the word element is the most important means of identifying a mark. Besides, it should be born in mind that the average consumer retains only an imperfect image of the mark in his mind, which increases the importance of the word elements of the mark applied for. Therefore, the contested mark has no elements that could be considered clearly more distinctive than other elements.

Visually, the signs coincide in the sequence of letters ‘A*UAPOX’. These letters constitute the major part of the earlier mark and appear in the same order in the contested mark. These word elements are highly similar and will most likely attract the relevant public’s attention. In addition, the stylisation of the word elements in the contested sign is not sufficiently striking to render the contested sign visually dissimilar to the earlier mark.

However, the signs differ in the letters ‘CC’ and ‘Q’ and in the additional word ‘PIVEMA’ as well as in the figurative representation of the contested mark. The earlier mark is a word mark and the contested mark is a figurative mark in a slightly stylised typeface containing two figurative devices; one in its beginning and another one in its end.

As regards the figurative elements of the contested mark, as explained above, they are visually striking due to their size. The figurative device of the letter ‘P’ will be considered as an ordinary graphical means of bringing the verbal element to the attention of the public and the figurative device of the dwarf will be seen as a distinctive element. Nevertheless, the arrangement of the figurative devices brings into the fore the word elements ‘ivema aquapox’. In addition, the figurative elements, that is the brush and the paint bucket that the dwarf holds in his hands, are considered to be weak figurative elements that refer indirectly to the goods applied for. Therefore, when compared visually, it will be the word elements of the earlier and the contested mark that will catch the attention of the relevant public, since, according to established case law, 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 will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of letters ‛A-Q/CC-U-A-P-O-X’, since ‘CC’ and ‘Q’ generally have the same sound in Spanish. Therefore, ‘ACCUAPOX’ sounds like ‘AQUAPOX’. The pronunciation differs in the syllables ‘PI-VE-MA’ of the contested mark, which has no counterparts in the earlier sign. Due to the fact that the coinciding syllables ‛A-Q/CCUA-POX’ are phonetically identical and the signs differ aurally only in the syllables ‘PI-VE-MA’ of the contested mark, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory. However, the letters ‘ACCUA’ of the earlier trademark and ‘AQUA’ of the contested mark are likely to be perceived as referring to the Spanish word ‘agua’ that means water and hence will be considered weak word elements as regards characteristics of the goods concerned. Furthermore, as explained above, the contested sign contains the concept of the dwarf holding a brush and a bucket. Considering the above, the signs are conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal , despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to established case law, the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As already pointed out, the goods under comparison are partly identical, partly similar (to different degrees) and partly dissimilar. The signs are similar on account of the letters ‘A*UAPOX’ which they have in common and which will be perceived phonetically as identical. Apart from their visual and phonetic similarity, the letters ‘ACCUA’ of the earlier trademark and ‘AQUA’ of the contested mark will be perceived as referring to water and hence to characteristics of the goods concerned. The signs differ in the figurative representation and the additional letters ‘PIVEMA’ of the contested sign. The common letters ‘A*UAPOX’ occupy a central position within the contested mark and constitute the major portion of the earlier sign. Therefore, despite the fact that the figurative devices of the contested sign are dominant and the additional letters ‘PIVEMA’ are in the beginning of the mark, these latter elements are not sufficient to clearly distinguish the marks. In addition, it has to be stressed that it is quite possible that the earlier mark with the difference of the letters ‘CC’ and ‘Q’ used by the applicant in a composite sign including the name of the applicant’s company still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element. In such a case the overall impression produced by the composite sign may lead the public to believe that the goods at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.

Account is 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).Therefore, despite the high degree of attention that the relevant public may display when purchasing some of the goods at issue, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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

Marzena MACIAK

Volker Timo MENSING

Vít MAHELKA

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.