OPPOSITION No B 2 670 449

Grupa Lotos S.A., ul. Elblaska 135, 80718 Gdansk, Poland (opponent), represented by Kancelaria Optimas Radłowski i Wspólnicy sp. k, ul. G. Zapolskiej 9, 30-126 Kraków, Poland (professional representative)

a g a i n s t

Uwe Peschek, Dorfstr. 7, 85649 Brunnthal, Germany (applicant).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 670 449 is upheld for all the contested goods, namely:

Class 3: Furbishing preparations; caustic cleaning agents; foam detergents; floor treatment compositions; cleaning preparations in the form of foams; windscreen cleaning preparations; detergent strengtheners; ammonia [volatile alkali] [detergent]; cleaning agents for metal; cleaning agents for stone; glass cleaning preparations; cleaning compositions for spot removal; carpet cleaning preparations; cleaning preparations for leather; cleaning preparations for fabrics; wipes incorporating cleaning preparations; cleaning preparations impregnated into pads; paper hand towels impregnated with cleaning agents; pre-moistened towelettes impregnated with a detergent for cleaning; cloths impregnated with a detergent for cleaning.

Class 21: Dispensers for detergents; Brushes adapted to receive a cleaning agent.

2. European Union trade mark application No 14 875 521 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent initially filed an opposition against all the goods of European Union trade mark application No 14 875 521. Following the withdrawal of the opposition in relation to all goods in Class 5 and some goods in Class 3, the opposition is directed against some goods in Class 3 and all goods in Class 21. The opposition is based on, inter alia, Polish trade mark registration No 200 591. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Polish trade mark registration No 200 591.

1. The goods and services

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

Class 3: Windscreen washer fluids; car care fluids; car shampoo; liquid for cleaning all types of engines and car windows, upholstery cleaning fluids, rim cleaner

Class 4: industrial oils and greases; mineral oils; motor oils; mazut; fuel oils; synthetic and semi-synthetic oils;

Class 21: bottles; storage canisters; non-metallic container for fluids

Class 35: wholesale services for fuel, oil and automobile parts; services relating to running of shops at petrol stations for the retail of groceries, industrial products, stationery, magazines, books, maps, road atlases, cosmetics, motor oils, car cosmetics;

Class 37: Service station services, namely fueling, lubricating and washing of vehicles; vehicle repair; oil changes; replacement of tyres;

Class 39: Distribution of fuels and oils.

The contested goods are the following:

Class 3: Furbishing preparations; caustic cleaning agents; foam detergents; floor treatment compositions; cleaning preparations in the form of foams; windscreen cleaning preparations; detergent strengtheners; ammonia [volatile alkali] [detergent]; cleaning agents for metal; cleaning agents for stone; glass cleaning preparations; cleaning compositions for spot removal; carpet cleaning preparations; cleaning preparations for leather; cleaning preparations for fabrics; wipes incorporating cleaning preparations; cleaning preparations impregnated into pads; paper hand towels impregnated with cleaning agents; pre-moistened towelettes impregnated with a detergent for cleaning; cloths impregnated with a detergent for cleaning.

Class 21: Dispensers for detergents; Brushes adapted to receive a cleaning agent.

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 3

The contested furbishing preparations overlap with the opponent’s car care fluids. Therefore, they are identical.

The contested caustic cleaning agents; foam detergents; cleaning preparations in the form of foams; ammonia [volatile alkali] [detergent]; cleaning agents for metal overlap with the opponent’s liquid for cleaning all types of engines and car windows, upholstery cleaning fluids. Therefore, they are identical.

The contested windscreen cleaning preparations are identical to the opponent’s windscreen washer fluids, although worded slightly differently.

The contested glass cleaning preparations overlap with the opponent’s liquid for cleaning car windows. Therefore, they are identical.

The contested cleaning compositions for spot removal; carpet cleaning preparations; cleaning preparations for leather; cleaning preparations for fabrics; wipes incorporating cleaning preparations; cleaning preparations impregnated into pads; pre-moistened towelettes impregnated with a detergent for cleaning; cloths impregnated with a detergent for cleaning overlap with the opponent’s rim cleaner. Therefore, they are identical.

The contested floor treatment compositions and cleaning agents for stone are similar to the opponent’s rim cleaner as they have similar natures, purposes and methods of use. Furthermore, they target the same public and can have the same producers.

The contested detergent strengtheners are similar to the opponent’s car shampoo. The goods can be used together and target the same consumers. They may be produced by the same undertakings and sold through the same distribution channels.

The contested paper hand towels impregnated with cleaning agents are similar to the opponent’s rim cleaner. The goods under comparison have the same general purpose, of cleaning. Furthermore, they target the same public and can have the same producers and distribution channels.

Contested goods in Class 21

The contested dispensers for detergents and brushes adapted to receive a cleaning agent can be used together with the opponent’s liquid for cleaning car windows. They can target the same consumers and be sold through the same channels of distribution. Therefore, they are similar.

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, the goods found to be identical or similar are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

LOTOS	Lotosani
Earlier trade mark	Contested sign

The relevant territory is Poland.

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).

The earlier mark is composed of one word, ‘LOTOS’, which is a Polish word for ‘lotus’. The contested sign is composed of the word ‘LOTOSANI’, which does not have a meaning as such in Polish. However, since an average consumer perceiving a word element will break it down into elements which suggest a concrete meaning or resemble known words, at least part of the relevant public may identify in the contested sign the word ‘LOTOS’ or associate the contested sign with the meaning of this word.

Given that the signs are word marks, which are protected for the words themselves and not their specific depiction, the difference in the case used for the letters is irrelevant to the comparison.

Neither of the signs has any element that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the five letters of the word ‘LOTOS’, which constitutes the whole earlier mark and appears at the beginning of the contested sign. They differ in the additional three letters ‘ANI’ at the end of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the five letters ‛LOTOS’, which constitute the whole earlier mark and appear at the beginning of the contested sign. The pronunciation differs in the sound of the three letters ‘ANI’ at the end of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs may be associated with similar meanings, the signs are conceptually highly similar.

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.

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 direct 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.

5. Global assessment, other arguments and conclusion

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.

Given the high degree of overall similarity between the contested sign and the earlier, distinctive mark, the relevant public, when encountering the signs in relation to identical or similar goods, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.

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

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No 200 591. It follows that the contested trade mark must be rejected for all the contested goods.

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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier Polish trade mark registration No 200 591 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, he 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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.

The Opposition Division

Anna BAKALARZ

Justyna GBYL

Begoña URIARTE VALIENTE

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.

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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.