OPPOSITION No B 2 871 666

Evonik Industries AG, Rellinghauser Str. 1 - 11, 45128 Essen, Germany (opponent), represented by Roland Weiß, Rodenbacher Chaussee 4, 63457 Hanau-Wolfgang, Germany (professional representative)

a g a i n s t

Evopharm s.r.o., Vyšehradská 12, 851 06 Bratislava, Slovakia (applicant), represented by Matus Navrat, Tomasikova 5/B, 82101 Bratislava, Slovakia (professional representative).

On 21/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 871 666 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 007 304 . The opposition is based on international trade mark registration No 918 426 ‘EVONIK’ designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON A PARALLEL OPPOSITION CASE

Opposition No B 2 885 930 was filed against all the goods and services of European Union trade mark application No 16 007 30416 007 304 , namely against all the goods and services in Classes 5, 35 and 44.

On 27/06/2018, the Opposition Division issued a decision in these parallel opposition proceedings in which the contested European Union trade mark application No 16 007 30416 007 30416 007 304 was rejected for all the contested services in Classes 35 and 44 and all the contested goods in Class 5 with the exception of the following goods: gelatin capsules for pharmaceuticals; empty capsules for pharmaceuticals. This decision became final.

As a result, the contested application No 16 007 30416 007 304 covers only the above mentioned goods in Class 5, that is, gelatin capsules for pharmaceuticals; empty capsules for pharmaceuticals.

The Office informed the opponent of the partial refusal of the application on 02/10/2018 and gave it until 07/12/2018 to decide whether or not to maintain its opposition. As the opponent did not reply before the deadline, the opposition was maintained and a decision has to be taken.

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 and services

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

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry, in animal breeding, wine-making and in the textile and paper industries; chemicals used in the construction industry; unprocessed artificial resins, unprocessed plastics; fertilizing preparations; plant growth regulators, flame protection preparations and fire extinguishing agents; tempering and soldering preparations; enzymes for industrial purposes; odour inhibitors for organic waste and for incorporating into plastics, textiles and paper; tanning substances; adhesives used in industry; technical gases, in particular noble gases and gases being raw materials for industrial purposes, chemical purposes, catalytic purposes, for inerting, for drying and gases being freezing agents; all afore-mentioned goods included in this class.

Class 2: Paints, varnishes, lacquers, pigments, paint dispersions, anti-corrosive preparations; wood preservatives; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4: Industrial oils and greases; lubricants; gases for warming, heating and cooling, gases for lighting, gases being propellants, gases being driving gases; gases for energy generation; gases for combustion; coal gases, coke-oven gases; mine gases; dust absorbing, wetting and binding compositions; fuels (including motor fuels) and illuminants; candles, wicks; electric power.

Class 5: Pharmaceutical, veterinary and sanitary preparations; sanitary products for medical use; dietetic substances adapted for medical use; food supplements for medical use; food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; gases for medical purposes, gases for respiration.

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; foils of metal for packaging; ironmongery, small items of metal hardware; metallic pipes and tubes; caverns or containers of steel; safes; goods of metal, not included in other classes; ores.

Class 7: Machines for environmental technology, waste disposal, power engineering, air-conditioning technology, processing technology and automobile engineering; continuous-flow machines; mining machines; hoisting machinery and conveyers; construction equipment, namely excavators, cranes, concrete mixers and pumps, hole diggers; transport machines; casting machines; machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; catalytic converters; machines and machine parts for generating gas, including gas compressors, gas liquefiers and gas splitters as well as valves and pumps; machines and parts therefore for generating and distributing energy, in particular heat, steam and electricity, in particular using alternative energy sources; separators; condensers (steam) (parts of machines); parts of the aforementioned goods.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity; apparatus for recording, transmission and reproduction of data, sound or images; magnetic data carriers; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; data terminals; computer software and firmware; components and electrically-controllable liquid crystals for screens; fire-extinguishing apparatus; controls and regulating apparatus for machines generating gas; measuring and monitoring apparatus for machines generating gas; electricity conduits.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; purification installations for sewage; chemical reactors for the chemical industry; nuclear reactors; safety fittings for gas apparatus and gas pipes; cooling devices for storing and transporting gases.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); packaging material, packaging bags and pouches of paper, cardboard or plastics, included in this class; packaging bags.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; scaffolding, not of metal; tiles and paving slabs, not of metal; artificial stones; coatings (building materials); non-metallic pipework; caverns or containers of concrete.

Class 35: Advertising; business management; business administration and organizational project development; business consultancy concerning residue disposal of power plants and waste incineration plants; office functions; drawing up of statistics; accounting; auctioneering; business investigations, marketing, market research and market analysis, business consultancy or organisation consultancy, professional business consultancy, personnel management consultancy, rental of office machinery and equipment, arranging business negotiations for others; arranging contracts for third parties for the buying and selling of goods; reproduction of documents; organisation of fairs and exhibitions for commercial and/or advertising purposes; mediating contracts with electric power suppliers.

Class 37: Building construction; installation services; plant construction in the fields of cleanroom, air-conditioning, energy, heat and/or environment technology; demolition; damp-proofing; roofing; insulating work; electric installation; facade cleaning; fireplace construction; tile laying; floor laying; dehumidification of buildings; scaffolding; glazing; structural and civil engineering; plastering and tiling; road building, tunnelling; water engineering; industrial building; installation and fitting of lighting equipment, lightning protectors, earthing installations, radio and communications devices, heating, ventilating and air-conditioning installations, refrigerating apparatus, machine installations, sanitary installations; insulation; plumbing and gas and water installation; painting, lacquering and wallpapering; parquet floor laying; pipeline laying; cleaning of buildings, chimneys, drains, motor vehicles and textiles; repairs to buildings; repair or maintenance of electrical engineering goods, mechanical engineering goods, chemical installations, thermo technical installations, burners, precision engineering goods, healthcare apparatus, heating, air-conditioning, cooling and ventilating apparatus, motor vehicles, aircraft, ships, mechanical apparatus and devices for medical and orthopaedic purposes, photographic, projection and cinematographic apparatus, data technology systems, irrigation devices, power supply systems and gas supply systems, clothing, bicycles, rubber goods, upholstery, shoes and clocks; ship building; chimney construction; blasting; stucco, plastering and rough casting; laying of land and sea cables; rental of machinery, tools and equipment for building; destroying vermin and weed killing (except for agricultural purposes); washing of laundry; carpentry and timber engineering and construction of wooden buildings; building and construction consultancy.

Class 39: Transport and storage; transport and distribution of energy, electricity, gas, heat and district heat, compressed air and/or water; transport of gases, liquids and solids by pipeline; vehicle towing, transport of persons and goods by car, rail, ship and aeroplane; loading and unloading of boats; storage of goods and furniture; guarded transport of money and valuables, ambulance transport; travel arrangement, garage and parking space rental, car rental, packaging of goods.

Class 40: Treatment of materials; bookbinding, film development and reproduction of photographs, wood-working, metal treatment and tempering, surface refinement or anodic oxidation, enamelling, galvanisation, phosphatising, chromium-plating, zinc-plating, textile processing or finishing, bleaching, dyeing; recycling of residue from fossil fuel power plants and of waste; incineration of residue from fossil fuel power plants and of waste; production of energy and heat.

Class 41: Entertainment; sporting and cultural activities; education; providing of training; instruction, driving instruction, correspondence courses, language tuition; further training; personnel training in the field of power plants, waste incineration plants, waste disposal plants, and water treatment plants; publication of books, periodicals and newspapers; organisation of exhibitions for cultural and/or educational purposes.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; technical consultancy; surveying; construction planning and consultancy; material testing; performing chemical and physical analysis of waste and residue from waste incineration plants, power plants and/or water treatment plants; architectural services, services of chemists, engineering services; bacteriological or chemical laboratories, services of physicists; computer programming; rental of data processing installations.

The contested goods are, after partial rejection of application, the following:

Class 5: Gelatin capsules for pharmaceuticals; empty capsules for pharmaceuticals.

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.

As a preliminary remark, it should be noted that capsules for medicines are empty containers designed to hold a certain dose of medicine (in the form of a powder or liquid). Although it could be claimed that the purpose of the contested goods gelatin capsules for pharmaceuticals; empty capsules for pharmaceuticals, broadly speaking, is medical, the specific purpose of each of these items differs from the opponent’s pharmaceutical and medical goods in Class 5 . Moreover, they differ in nature, method of use and usual origins. They do not share distribution channels and do not target the same public. They are not in competition. Therefore, the contested goods are dissimilar to the earlier goods in Class 5.

The contested goods are even more different to the other goods and services of the earlier mark in Classes 1, 2, 3, 4, 6, 7, 9, 11, 16, 17, 19, 35, 37, 39, 40, 41 and 42 which cover mainly chemicals preparations, paints, cleaning preparations, industrial oils and greases and gases, building materials, machines, electronic apparatus and instruments, stationary goods, advertising services, construction services, transportation, and entertainment activities. These goods and services have nothing in common with the contested goods: they differ in nature, purpose, method of use. They usually come from different producers, target distinct relevant publics and are sold by distinct distribution channels. Furthermore, they are not complementary or in competition. Therefore, these goods and services are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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

Carmen SÁNCHEZ PALOMARES

Julie, Marie-charlotte HAMEL

Catherine MEDINA

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.