OPPOSITION No B 2 463 480

MIP METRO Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by MIP METRO Group Intellectual Property GmbH & Co. KG, Eva Schiller, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

Makroplas S.L., Polígono Industrial La Estación s/n, 47410 Olmedo, Spain (applicant), represented by G.P.I. Patentes y Marcas S.L., Calle Consejo de Ciento 286, 2º, 1°, 08007 Barcelona, Spain (professional representative).

On 18/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 463 480 is upheld for all the contested goods and services.

2. Community trade mark application No 13 314 703 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 314 703. The opposition is based on Community trade mark registration No 8 911 018. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; photograph albums; adhesives for stationery or household purposes; self-adhesive tapes for stationery or household purposes; artists’ materials; paint brushes; typewriters and office machines (except furniture); instructional and teaching material (except apparatus);ring binders, conference folders, writing cases, school exercise books; packaging material of plastic, not included in other classes, in particular envelopes, bags and films; printers’ type; printing blocks; paper products for household and sanitary purposes (included in class 16) including of cellulose, non-woven textile fabrics and nap fabrics; bags for keeping food fresh, of paper and plastic; rubbish bags of paper and plastic.

Class 35: Wholesale and retail in the field of food, drinks and tobacco; wholesale and retail in the fields of chemicals, cleaning, polishing, abrasive and washing preparations, disinfectants and preparations for destroying vermin, paints, pharmaceutical products, cosmetics, goods for the health sector, pharmaceutical and veterinary preparations, materials for dressings, medical apparatus, razors and accessories therefor, perfumery, household goods, utility articles for household purposes, fuels, lighting fuels, engine fuels, industrial oil and grease, lubricants, candles, machines, tools and goods of common metal, construction articles, DIY articles and garden articles, plants and seeds, hobby requisites and craft supplies, electric goods and electronic goods, sound recording carriers and data carriers, apparatus for lighting, heating, cooking, refrigerating, drying and ventilating, steam cleaning and steam finishing apparatus, apparatus for sanitary purpose and fittings therefor, vehicles, parts of vehicles and vehicle accessories, cycles and parts and fittings therefor, fireworks, horological instruments and jewellery, optical apparatus and instruments, musical instruments, printed matter, stationery, office requisites, bags and saddlery, furniture, furnishings and decorations, tents, tarpaulins, clothing, shoes and textile goods, headgear, leather and imitations of leather, trunks (luggage), travelling bags and handbags, rucksacks, umbrellas and parasols, toys, sports apparatus and accessories, sports equipment and accessories, food and drink, agricultural, horticultural, and forestry products, live animals, foodstuffs for animals and acessories therefor, fodder, smokers’ articles, tobacco products and other luxury items, including via the Internet and/or by means of teleshopping broadcasts and/or online and/or catalogue mail order; import-export agencies; receiving, processing and handling of orders (office functions); procurement services for third parties (acquisition of goods and services for other companies); order placement and delivery services and invoice management, including within the framework of e-commerce; invoicing services; conducting bonus and loyalty programmes, being customer loyalty schemes for marketing purposes (included in class 35); follow-up of bonus and loyalty programmes being customer loyalty schemes, by means of the evaluation and compilation of statistical data (included in class 35); advertising, attracting customers and customer care by means of mail advertising (mailings);organisation and conducting of exhibitions and fairs for commercial and advertising purposes; planning, devising and conducting advertising initiatives; presentation of companies on the Internet and other media; sponsoring in the form of advertising; publication of printed matter for advertising purposes, in particular catalogues; presentation of goods on communication media, for retail and wholesale purposes; updating of advertising material; shop-window dressing; sales promotion (for others); rental of advertising space, including on the Internet (banner exchange); rental of advertising material and advertising time on communication media; distribution of samples, seeking sponsorship; bringing together of a variety of goods from the aforesaid wholesale fields (other than transport), for others, and/or enabling consumers to conveniently view and purchase those goods; marketing (market research), including on digital networks; market research; opinion polling; merchandising (sales promotion); research in computer data files (for others) and/or business research; business information, maintenance of data in computer databases; price setting for goods and services, invoice management for electronic ordering systems; office machines and equipment rental; vending machine rental services; rental of sales stands; arranging subscriptions to a telecommunications service (for others); providing of addresses, commercial and business contacts, including via the Internet, arranging of commercial transactions, for others, including within the framework of e-commerce, of mobile telephone contracts (for others) and of contracts, for others, for the purchase and sale of goods; arranging of advertising and promotional contracts for others; arranging newspaper subscriptions (for others); business consultancy; planning and monitoring of business developments with regard to organisational matters; planning (assistance) regarding management; professional business consultancy for franchising concepts; business administration; office functions; electronic data processing consultancy; data storage; digital data processing and data editing; research, research in databases and on the Internet, for others.

Class 40: Treatment of materials, in particular printing, photographic film development, creation of photographic negatives, processing of cinematographic films (including digital), recycling of waste and trash, incineration and destruction of waste and trash, cutting, smithery and locksmithery.

The contested goods and services are the following:

Class 16: Bags of plastics for lining refuse bins; bags made of plastics for packaging; tamper evident tapes of plastic; bubble packs (plastic -) for wrapping or packaging; plastic wrap; plastic film for packaging; plastic film for packaging; rolls of plastic film for packaging; bags made of plastics for packaging; plastic envelopes.

Class 35: Retailing and wholesaling in shops and via global computer networks of all kinds of plastics goods, bags, tapes, packaging, sheets, wrappers, rolls, sacks and envelopes; advertising; business management; business administration; office functions.

Class 40: Processing of plastic; laminating of plastic; recycling of plastics; custom assembling of materials for others.

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

The term ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

The applicant argues that the parties operate in different fields of activity and the goods and services cannot be regarded as very similar. According to the applicant, its company produces bags and shrink-wrap film, while the opponent is active in the wholesale of food and other goods. The Opposition Division notes that the comparison of the goods and services must be based on the wording indicated in the lists of goods and services. The actual or intended use of the goods and services not stipulated in the list of goods and services is not relevant for the examination (judgment of 16/06/2010, T‑487/08, ‘Kremezin’, paragraph 71). Therefore, this argument by the applicant has to be set aside.

Contested goods in Class 16

Bags of plastics for lining refuse bins; bags made of plastics for packaging; tamper evident tapes of plastic; bubble packs (plastic -) for wrapping or packaging; plastic wrap; plastic film for packaging; plastic film for packaging; rolls of plastic film for packaging; bags made of plastics for packaging; plastic envelopes are included in the broad category of the opponent’s packaging material of plastic, not included in other classes, in particular envelopes, bags and films in Class 16. Therefore, they are considered identical.

Contested services in Class 35

Retailing and wholesaling in shops and via global computer networks of bags, tapes, sheets, wrappers, rolls, sacks and envelopes are included in the broad categories of the opponent’s wholesale and retail in the field of stationery, office requisites, bags including via the Internet and/or by means of teleshopping broadcasts and/or online and/or catalogue mail order. Therefore, they are considered identical.

Retailing and wholesaling in shops and via global computer networks of packaging overlap with the opponent’s wholesale and retail in the field of stationery because some of the selling services rendered by the opponent may refer to stationery made of plastic.

Retailing and wholesaling in shops and via global computer networks of all kinds of plastics goods overlap with the opponent’s wholesale and retail in the field of stationery, office requisites, bags including via the Internet and/or by means of teleshopping broadcasts and/or online and/or catalogue mail order because some of the goods sold by the opponent may be made of plastic. Therefore, they are considered identical.

Business management includes, as a broader category, the opponent’s opinion polling. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

Business administration; office functions; advertising are identically contained in both lists of services in Class 35.

Contested services in Class 40

Processing of plastic; laminating of plastic; recycling of plastics; custom assembling of materials for others are included in the broad category of the opponent’s treatment of materials in Class 40. Therefore, they are considered identical.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

Both signs are figurative. The earlier sign is composed of the word ‘MAKRO’ in standard, bold, lower case yellow characters on a blue background. The contested sign is composed of a fairly big figurative element with the letters ‘MK’ inside a circle, whereby the letter ‘M’ is standard and the letter ‘K’ is joined to the letter ‘M’, and the element ‘MAKROPLAS’ in slightly smaller lettering is placed underneath. All elements of the contested sign are green.

Visually, the signs are similar to the extent that they have the word ‘MAKRO’ in common. However, they differ in ‘-PLAS’ and ‘MK’ of the contested sign, and in their graphic depictions.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is the same in the sound of the letters ‛MAKRO’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛PLAS’ of the contested mark, which have no counterparts in the earlier sign, and in the letters ‘MK’ of the contested sign, which are, however, unlikely to be pronounced, as they would be seen as referring to ‘MAKRO’.

Conceptually, part of the public, such as the Polish- or Finnish-speaking public, will perceive the word ‘MAKRO’ as a common prefix referring to the notion of ‘large’. The remaining part of the public, such as the English-, Spanish-, French- and Italian-speaking parts, will perceive the earlier sign, ‘MAKRO’, as a misspelling of ‘macro’, referring to the same concept. As ‘MAKRO-’ or ‘MACRO-’ is a common prefix, it is very likely to be also perceived as such in the contested sign. The Dutch-speaking part of the relevant public may also dissect the Dutch word ‘-PLAS’ from the contested sign as referring to a puddle.

Since the signs will be associated with similar meanings, on account of the word ‘MAKRO’, the signs are conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The applicant argues that the figurative element is dominant in the contested sign; however, the figurative element of the contested sign is not considered visually outstanding, as the verbal element, ‘MAKROPLAS’, also occupies an important position within the mark, as it is presented in large upper case letters in the same colour as the figurative element. The signs have no elements that are clearly more dominant than other elements. (See judgment of 11/11/2009, T‑162/08, ‘GREEN by missako’, paragraph 37.)

Therefore, the Opposition Division is of the opinion that the marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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, the goods and services found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise with regard, for example, to the services in Class 40. The degree of attention will vary from average to higher.

6. Global assessment, other arguments and conclusion

The goods and services are identical and target the public at large and business customers, whose attention varies from average to higher than average.

The marks are visually, aurally and conceptually similar to the extent that they have the word ‘MAKRO’ in common. They differ in their graphic depictions and the additional verbal elements of the contested sign.

When a sign consists of both word and figurative components, as is the case with the contested mark, the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will more readily refer to a sign by its verbal component than by describing the elements of stylisation. In the present case, the figurative element also contains the verbal element ‘MK’; however, it is reasonable to assume that the relevant public is more likely to keep in mind the partly meaningful word component ‘MAKROPLAS’ when referring to the goods and services in question rather than a combination of two letters, which are unlikely to be pronounced, as they will be seen as referring to ‘MAKRO’.

The Court has set out the essential principle that 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 (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 17). This principle of interdependence is crucial to the analysis of likelihood of confusion.

In view of the foregoing and the fact that the earlier mark is fully incorporated in the contested sign at the beginning of a word element which is not minimal and less distinctive, the Opposition Division takes into account the interdependence principle and is of the opinion that the similarities cannot be outweighed by the dissimilarities; and that the relevant public, even with a higher degree of attentiveness, would believe that the identical goods and services come from the same undertaking or from economically-linked undertakings.

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

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 8 911 018. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 CTMR and therefore did not incur representation costs.

The Opposition Division

Ioana MOISESCU

Katarzyna ZANIECKA

Agueda MAS PASTOR

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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 Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.