OPPOSITION No B 2 868 787

Leonhard Enneking, Eichenweg 17, 49401, Damme, Germany (opponent), represented by AWPR Apel Weber und Partner Rechtsanwälte mbB, Freie-Vogel-Str. 393, 44269 Dortmund, Germany (professional representative)

a g a i n s t

Bay Holdings, Inc., 3503 N Euclid Ave, 48706 Bay City, Michigan, United States of America (applicant), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative).

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

DECISION:

1. Opposition No B 2 868 787 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. All the references in this decision to the EUTMR, EUTMDR and 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 16 144 115 for the mark ‘ ’. The opposition is based on European Union trade mark registration No 7 303 027 for the word mark ‘PlastBay’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the European Union trade mark No 7 303 027 on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 07/12/2016. Earlier European Union trade mark No 7 303 027 was registered on 07/02/2012. Therefore, the request for proof of use is inadmissible.

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, inter alia, the following:

Class 7: Machines for processing plastic.

The contested goods are the following:

Class 7: Plastic processing machines and machines parts, namely strand pelletizers and self threading pelletizers.

As a preliminary remark, an interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. In particular, 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. Consequently, the contested goods are limited to the specific plastic processing machines strand pelletizers and self threading pelletizers.

In light of the above restriction, the Opposition Division agrees with the opponent’s view, contrary to the applicant’s view, that the contested strand pelletizers and self threading pelletizers are clearly included in the broader category of the opponent’s machines for processing plastic. Therefore, in line with the Office practice, these goods are held identical.

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 in question.

In the present case, the goods found to be identical are directed at business customers with specific professional knowledge or expertise in the plastic processing industry. The goods may be infrequent purchases, and may also be expensive. The degree of attention will be higher than average, given the specialised nature of the goods.

3. The signs

PlastBay
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 word mark, consisting of the sole verbal element ‘PlastBay’.

While it is acknowledged that the earlier mark is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The English term ‘Bay’ (i.e. ‘a part of a coast where the land curves inwards’) will not be understood by a part of the public, while it will be understood by another part of the public that is English-speaking or familiar with the English language; in any event, it will not convey any specific information about the objective characteristics of the goods and is thus of normal distinctiveness for the relevant public. On the other hand, the element ‘Plast’ will be understood by the relevant professional public of the specific goods at issue (i.e. machines for processing plastics) throughout the European Union as referring to, or at least bringing into mind, the concept of plastic (i.e. ‘light, strong synthetic substance of polymers that can be made into different shapes’) on account of the highly similar equivalent terms in most languages of the relevant territory (e.g. in Croatian, Latvian, Lithuanian and Slovenian language, plastika, in Czech plastický, in English and in Dutch plastic, in Finnish plastinnen, in French plastique, in German Plastik, in Hungarian plasztik, in Italian plastica, in Maltese plastik, in Polish plastikowy, in Portuguese and Spanish plástico) or even identical terms in other languages (e.g. plast in Danish, Estonian and Swedish) and also on account of the fact that the relevant professional public, given the specific goods, will be familiar with this term in English. Consequently, this term is descriptive, hence devoid of distinctiveness, or at most weak, in relation to the goods at issue.

Furthermore, as the earlier mark is a word mark, it has no element that is more dominant (visually more eye-catching) than others. Also, as regards word marks, as the earlier mark, it is irrelevant if it is depicted using lower or upper case letters, or a mixture thereof.

The contested sign is a composite mark, consisting of the verbal element ‘BPM’ depicted in a stylised red font, with black and white shades and outlines, under which are depicted the verbal elements ‘BAY PLASTICS MACHINERY’ in a smaller, stylised font, in white bold upper case letters, against a black rectangular background. As seen above, the verbal element ‘BAY’ is arbitrary and thus of normal distinctiveness in relation to the relevant goods. The English terms ‘PLASTICS MACHINERY’ are likely to be understood by the relevant professional public of the specific goods at issue (on account of their highly similar equivalent terms in the languages of the relevant territory, in addition to the fact that the relevant professional public, given the specific goods, will be familiar with these English terms). As these verbal elements describe the nature of these goods, they are devoid of distinctiveness. The string of letters ‘BPM’ could be perceived as an acronym (for Bay Plastics Machinery depicted below) but in any event the Opposition Division considers, contrary to the opponent’s view, that it enjoys normal distinctiveness. In this regard, to support its claim that the acronym is devoid of distinctiveness, the opponent refers to a decision of 15/12/2012 in C-90/11 and C-91/11 which however related to abbreviations of descriptive indications. Therefore, this argument of the opponent must be set aside.

To the left of the letters ‘BPM’ is depicted a figurative device in black and white colours with small red spots that could be perceived as a small machinery wheel with pellets. Furthermore, the figurative device of the machinery wheel (with, if perceived, red pellets), is somewhat allusive in relation to the goods at issue. Finally, the stylisation of the letters and the black background will be perceived as being of a rather decorative nature.

Furthermore, in the overall composition of the contested mark, the element ‘BPM’ - due to its size, colour and position - is more visually outstanding than the other elements.

Last but not least, it must be borne in mind that an assessment of similarity between two signs means more than taking just one component of a composite sign and comparing it with another. On the contrary, the comparison must be made by examining each of the signs in question as a whole.

Visually, the signs coincide in the string of letters ‘BAY’ and in the string of letters ‘PLAST’, albeit in different positions. The signs also differ in the additional element ‘BPM’ which is the more dominant element of the contested sign and of normal distinctiveness and which has no counterpart in the earlier mark. In addition, the signs differ in the figurative aspects of the contested sign, as well as in the additional verbal components ‘*ICS MACHINERY’ (albeit of at most weak distinctiveness) of the contested sign.

Although in principle the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, the particular graphical depiction of the marks also has to be given appropriate significance when the visual impact of the marks is considered. An examination of the similarity of the signs must take account of the overall impression produced by those signs since the average consumer normally perceives a sign as a whole and does not examine its individual details.

In the present case, the mere coincidence in strings of letters is not sufficient for the marks to convey a significantly similar overall impression, since the letters that the signs have in common are arranged in different places in the marks and the differing letters and the contested signs’ graphical features will be noticed by the relevant consumers.

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

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 letter strings ‘BAY’ and ‘PLAST’, albeit present in a different order. The pronunciation differs indeed in their positioning (‘PLAST’ being the beginning of the earlier mark and the middle part of the second verbal component in the contested sign, where it is part of a longer verbal element) as well as in the first and additional verbal element of the contested sign ‘BPM’ (which is normally distinctive and is likely to be the first element which the relevant public reads and pronounces in the contested sign, due to its size, colour and central position). The signs also differ in the pronunciation of the (albeit at most weak) elements ‘*ICS MACHINERY’ of the contested sign. Furthermore, the signs are different in length, rhythm, structure and composition.

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

Conceptually, as seen above, both marks will be seen as referring to plastics (the latter being of at most weak distinctiveness) and, by a part of the public, to the concept of ´Bay´. Even for the part who will associate the distinctive element ´Bay´ with the same meaning in both marks, still on account of the different structure of the marks (in the earlier mark the element 'Bay' being qualified by 'Plast' and in the contested sign 'Bay' forming part of the meaningful expression 'Bay Plastics Machinery') and the additional elements in the contested sign, the conceptual similarity should be at most average.

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 an at most weak (if not non‑distinctive) element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29).

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The signs are visually and aurally similar to a low degree only; in addition the signs are at most conceptually similar to an average degree.

Therefore, although the signs coincide in some letters, taking into account that all the goods, albeit identical, are directed at professional customers with an degree of attention that is higher than average, the Opposition Division finds that there are sufficient differences to outweigh the similarities between them. The overall impressions produced by the signs will clearly allow the relevant professional consumers throughout the relevant territory to safely distinguish between the signs. Indeed, the similarities between the signs caused by the mere coincidence in the strings of letters ‘BAY’ and ‘PLAST’ (the latter of at most weak distinctiveness) are secondary within the overall impression given by the signs. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public under analysis, even considering that the goods are identical.

The opponent refers to a previous decision of the Office to support its arguments that the signs are highly similar. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

In addition, each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

Moreover, the signs considered in the current opposition proceedings and those involved in the cited previous decision differ. In particular, decision No R 716/2007-4 of 28/08/2008 that was confirmed by the General Court on 09/12/2009, T-484/08) related to signs that are held conceptually highly similar and visually and aurally similar to an average degree. Consequently, the previous decision cited by the applicant is not relevant in the present proceedings.

In view of the above, it follows that the opponent’s arguments in this regard must be dismissed.

Considering all the above, even where the attention will be average, there is no likelihood of confusion on the part of the public. Therefore, 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

Boyana NAYDENOVA

Edith VAN DEN EEDE

Angela DI BLASIO

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.