OPPOSITION No B 2 841 453

Megachim AD, 123 Lipnik Str., 7000 Ruse, Bulgaria (opponent), represented by Ivan Nikolov Ivanov, IP Consulting Ltd., 6-8, Mitropolit Kiril Vidinski Str., vh. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative)

a g a i n s t

Atlas Spółka z Ograniczoną Odpowiedzialnością, ul. Świętej Teresy od Dzieciątka Jezus 105, 91-222 Łódź, Poland (applicant), represented by Kancelaria Prawa Własności Przemysłowej i Prawa Autorskiego Teresa Czub & Krzysztof Czub Rzecznicy Patentowi Spółka Partnerska, ul. Reduta Żbik 5, 80-761 Gdańsk, Poland (professional representative)

On 05/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 841 453 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and/or EUTMIR should be understood as references to the regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 758 006 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 12 400 362 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 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 European Union trade mark registration No 12 400 362.

a) The goods

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

Class 2: Coatings; dyes, colorants, pigments and inks; raw natural resins; thinners and thickeners for coatings, dyes and inks.

The contested goods are the following:

Class 2: Anti-corrosive preparations; decorative and protective, permanent or temporary agents and compositions for covering surfaces of various types, namely dyes, paints, lacquers, mordants, varnishes; mordants, undercoatings, primers, coatings and paints for priming and reinforcing bases; primers for painting wood, wood preservatives, wood stains and dyes; binding preparations for paints and lacquers; coatings for roofing felt, coatings for roofing; thinners, thickeners and fixatives for dyes, paints, lacquers, stains, oils; colorants for concrete; water dispersed pigments for use in colouring concrete, industrial paints for use on concrete surfaces, concrete sealing agents (paints), concrete sealers (paints), coatings for the finishing of concrete, radiation curable coatings for concrete; coating compositions for preserving concrete [paints or oils].

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 2

The contested water dispersed pigments for use in colouring concrete are included in the broad category of the opponent’s pigments. Therefore, they are identical.

The contested anti-corrosive preparations; coating compositions for preserving concrete [paints or oils]; wood preservatives; industrial paints for use on concrete surfaces; concrete sealing agents (paints); concrete sealers (paints); coatings for the finishing of concrete, radiation curable coatings for concrete; decorative and protective, permanent or temporary agents and compositions for covering surfaces of various types, namely paints, lacquers, varnishes; undercoatings, primers, coatings and paints for priming and reinforcing bases; primers for painting wood; coatings for roofing felt, coatings for roofing are included in the broad category of the opponent’s coatings. Therefore, they are identical.

The contested colorants for concrete are included in the broad category of the opponent’s colorants. Therefore, they are identical.

The contested thickeners for dyes, paints, lacquers, stains, oils are included in, or overlap with, the broad category of the opponent’s thickeners for coatings, dyes and inks. Therefore, they are identical.

The contested thinners for dyes, paints, lacquers, stains, oils are included in, or overlap with, the broad category of the opponent’s thinners for coatings, dyes and inks. Therefore, they are identical.

The contested decorative and protective, permanent or temporary agents and compositions for covering surfaces of various types, namely dyes; wood stains and dyes are included in, or overlap with, the broad category of the opponent’s dyes. Therefore, they are identical.

The contested mordants for priming and reinforcing bases; decorative and protective, permanent or temporary agents and compositions for covering surfaces of various types, namely mordants are similar to the opponent’s coatings since they can share the same distribution channels, target the same relevant public and be produced by the same undertakings.

The contested fixatives for dyes, paints, lacquers, stains, oils are similar to the opponent’s thinners and thickeners for coatings, dyes and inks since they can share the same distribution channels, target the same relevant public and be produced by the same undertakings.

The contested binding preparations for paints and lacquers are similar to the opponent’s coatings since they can share the same distribution channels, target the same relevant public and be produced by the same undertakings. Furthermore, they are complementary.

b) 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 at business customers with specific professional knowledge or expertise, such as painters and decorators.

The degree of attention displayed by the end users (both the public at large as well as professionals) is likely to be higher than average. In this respect, the fact that a type of product is not purchased regularly by the average consumer, which applies to the goods concerned in Class 2, suggests that that consumer’s level of attention will be fairly high. Moreover, the consumer’s choice of coatings and other goods in Class 2 encompasses several considerations, namely, functional considerations such as the suitability of the material to the surface that is to be painted or treated, whether the surface concerned is located indoors or outdoors, and aesthetic considerations. Those sorts of considerations require a comparison and some reflection before a choice is made, and therefore a higher level of attention (see to this effect 05/10/2015, R 2827/2014-5, CROWN EASYCLEAN / Easyclean (fig.), § 16; 11/12/2014, T-12/13, ARTI, EU:T:2014:1054, § 53-54).

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 a figurative mark consisting of the verbal element ‘Dekorator’ depicted as a capitalised word in black letters and a figurative element above the letters ‘kora’ composed of three circles in red, green and blue respectively.

The contested sign is a figurative mark consisting of the larger verbal element ‘FOX’, depicted in slightly stylised white upper case letters, and the much smaller verbal element ‘DEKORATOR’ underneath, depicted in standard white upper case letters, both of which are depicted on an orange background in the shape of a parallelogram with two curved corners.

The verbal element ‘DEKORATOR’ of both signs will be understood by the relevant public throughout the European Union as meaning ‘a person who is employed to design and decorate the inside of people's houses’ since it either exists in the official language (e.g. in Polish) or is otherwise very close to the equivalent word in the official languages in the relevant territory (e.g. ‘dekorátor’ in Czech and Hungarian, ‘decorator’ in English and Romanian, ‘décorateur’ in French, ‘decorador’ in Spanish and Portuguese, ‘decoratore’ in Italian, ‘dekoratör’ in Swedish, ‘dekoratør’ in Danish, ‘dekoratorius’ in Lithuanian, ‘dekoraator’ in Estonian and ‘декоратор’ in Bulgarian -which is transliterated into ‘dekorator’, etc.). The opponent argues that the word ‘DEKORATOR’ is inherently distinctive for the goods concerned, in particular because the EUIPO has registered the earlier mark without any objections as to the distinctiveness of the sign. However, even if the earlier mark as a whole was considered by the Office to have the minimum distinctive character required for registration, this does not necessarily mean that the word ‘DEKORATOR’ as such is inherently distinctive. In this respect, taking into account that the goods concerned essentially consist of coatings and other products in Class 2 used to paint and decorate walls and other surfaces, the relevant public will primarily perceive the verbal element ‘DEKORATOR’ as referring to goods, or a specific line of products, that are intended for a professional public, i.e. decorators or ‘laymen’ in general who occasionally carry out decorative work (see by analogy 01/12/2014, R 1024/2014-2, painters (fig. mark), § 14). Therefore, even if the earlier figurative mark, taken as a whole, was registered by the Office, the verbal element ‘DEKORATOR’ of both signs, as such must still be considered to be of only very weak distinctive character in relation to all goods concerned.

As regards the figurative element of the earlier mark, since it consists of three circles (basic geometric shapes) depicted in three basic colours and taking into account that the goods concerned essentially consist of coatings, pigments and colorants, this element of the earlier mark must also be considered weak. The same goes for the figurative element of the contested sign since the use of backgrounds in simple geometrical forms, such as squares, ovals, rectangles or parallelograms, is quite commonly used to highlight other elements.

As regards the verbal element ‘FOX’ of the contested sign, it is an English word principally meaning ‘a wild animal which looks like a dog and has reddish-brown fur, a pointed face and ears, and a thick tail’. Therefore, the English-speaking part of the public will understand ‘FOX’ as having this meaning but the non-English-speaking public in the relevant territory will rather perceive it as a fanciful word without any meaning. Since the concept of a fox does not have any particular meaning in relation to the goods concerned, regardless of whether or not the word ‘FOX’ is understood by the relevant public, this verbal element of the contested sign will be perceived as distinctive to an average degree.

Furthermore, the verbal element ‘FOX’ stands out because of its position and much larger size and is, therefore, the most dominant (visually eye-catching) element in the contested sign whereas the verbal element ‘Dekorator’, in view of its considerably larger size, is the dominant element of the earlier mark.

Visually, the signs coincide in the word ‘DEKORATOR’, which is the only verbal element of the earlier mark but present at the end (bottom) of the contested sign. However, the coinciding word in both signs differs in their colours and the different use of lower/upper case letters. Furthermore, even if this word is the dominant element of the earlier mark, it is not the dominant element of the contested sign and its distinctiveness is also only very weak for the reasons set out above. In addition, the signs differ in all their other elements, namely - albeit also only weak - their respective figurative elements as described above as well as the additional distinctive verbal element ‘FOX’ at the top of the contested sign and which is also its dominant element. In this respect, it should also be taken into account that 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 (and top to bottom), which makes the part placed at the left (or at the top) of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar only to a very low degree overall.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the very weak word ‛DEKORATOR’, present identically in both signs. However, the pronunciation differs in the sound of the distinctive word ‘FOX’ present at the beginning (top) of the contested sign, which is the part that will first catch the attention of the consumer and which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to a low degree overall.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The figurative element of the contested sign (the parallelogram orange background) will not convey any particular conceptual content to consumers whereas the figurative element of the earlier mark (the three coloured circles) may either simply be perceived as such, and thus also as not conveying any particular conceptual content, or otherwise as representing paint in three different colours, which is a concept that is weak in relation to the goods concerned and, in any event, is not present in the contested sign. Nevertheless, although the contested sign as a whole does not have any meaning for the non-English-speaking public in the relevant territory, the very weak element ‘DEKORATOR’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to a low degree for this part of the public. For the English-speaking part of the public who will also perceive the distinctive concept of the element ‘FOX’ in the contested sign as outlined above, the coincidence in the very weak element ‘DEKORATOR’ will be even less relevant and the signs are therefore conceptually similar to a very low degree for this part of the public in the relevant territory.

As a result, the signs are conceptually similar either to a low or to a very low degree overall.

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

d) 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 claimed that the earlier trade mark enjoys reputation but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark as a whole must be seen as low for all the goods in question, namely coatings, pigments, colorants, dyes, thinners and thickeners for coatings, dyes and inks in Class 2.

e) Global assessment, other arguments and conclusion

As already mentioned above, 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).

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).

In the present case, the goods have been found identical or similar and the degree of attention of the relevant public is higher than average.

Despite the coincidence in the verbal element ‘DEKORATOR’, for the reasons set out above in section c) of this decision, the signs have been found visually similar to a very low degree, aurally similar to a low degree and conceptually similar either to a low or to a very low degree depending on the part of the public in question in the relevant territory. Furthermore, the distinctiveness of the earlier mark is low. In this respect, it must be borne in mind that the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24). It follows that a trade mark with low distinctive character also enjoys a lesser degree of protection. Whereas a company is certainly free to choose a trade mark with a low or even non-distinctive character, including trade marks with descriptive and non-distinctive words, and use it on the market, it must also accept, however, in so doing that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011-5, 4REFUEL (fig. mark)/REFUEL, § 15).

As also explained above, regardless of whether or not the meaning of the additional word ‘FOX’ in the contested sign is understood by the relevant public, it will be perceived as its most distinctive element and is also the dominant element in the overall impression produced by the sign.

Therefore, even if most of the goods concerned are identical, bearing in mind that the similarities between the signs are limited to the coincidence in a word that is of very weak distinctiveness as such and that it is also a secondary element within the overall impression given by the contested sign, consumers would have no reasons to believe, based on the remote similarities between the signs, that the goods in question originated from the same or economically linked undertakings.

Consequently, there is no likelihood of confusion on any part of the public in the relevant territory in relation to any of the goods concerned.

The opponent has also based its opposition on the following earlier trade marks:

1. European Union trade mark registration No 11 709 854 covering goods in Classes 1, 3 and 19; and

2. Bulgarian trade mark registration No 89 832 covering goods in Classes 2 and 19.

Since the first earlier mark is identical to the one that has been compared and does not cover any goods that would be more similar to the contested goods in Class 2 than those already examined, the outcome cannot be different with respect to goods for which the opposition has already been rejected based on this earlier mark. As regards the second earlier mark, it is also identical to the one that has been compared and although it covers goods in Class 2 that may also be identical to the contested goods, it covers a territory (Bulgaria) that has already been assessed above (as part of the European Union). In this respect, for the reasons set out above in section c) of this decision, the Bulgarian public will also understand the coinciding verbal element ‘DEKORATOR’ and perceive it as a very weak element as such. Furthermore, although the opponent claimed that this earlier trade mark also enjoys reputation, it did not file any evidence in order to prove such a claim and even if this earlier mark was registered by the Bulgarian Patent Office (as argued by the opponent), for the same reasons as those given in relation to the earlier mark already examined, the distinctiveness of this earlier national trade mark must also be considered to be low. As a result, the outcome cannot be different with respect to goods for which the opposition has already been rejected based on this earlier mark either. Therefore, no likelihood of confusion exists with respect to those goods based on any of the earlier marks invoked by the opponent.

Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier European Union trade mark registration No 12 400 362 and Bulgarian trade mark registration No 89 832.

On 10/05/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. Following a request for extension submitted by the opponent, this time limit expired on 22/11/2017.

The opponent did not submit any evidence concerning the reputation of these trade marks as claimed.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must therefore be rejected as unfounded also insofar as these grounds are concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Begoña URIARTE VALIENTE

Sam GYLLING

Sandra IBAÑEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.