OPPOSITION No B 2 918 939

Ctec (ni) Limited, Unit 6 Ashtree Enterprise Park, BT34 1BY Newry, United Kingdom (opponent), represented by Alpha & Omega, Chine Croft East Hill, EX11 1PJ Ottery St. Mary, United kingdom (professional representative)

a g a i n s t

K+S kali GmbH, Bertha-von-Suttner-Str. 7, 34131 Kassel, Germany (applicant), represented by Roloff Nitschke Anwaltssozietat, Brandenburger Str. 143, 14542 Werder (Havel), Germany (professional representative).

On 26/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 918 939 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 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 16 463 911 for the figurative sign namely against all the goods in Class 1.

The opposition is based on European Union trade mark registration No 11 788 007 for the word mark CMS and European Union trade mark registration No 11 792 124 , both for goods in the Classes 1, 2 and 17. The opponent invoked Article 8(1)(b) 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.

1. The goods

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

Class 1: Adhesive materials and adhesive sealants for use in the building industry; adhesive compositions; industrial adhesives; adhesives, other than for stationery and household purposes; sealants for use in the building industry; automobile brake system leak sealants; automobile cooling system leak sealants; automobile power steering system leak sealants.

Class 2: Paints, varnishes, lacquers; sealants in the nature of paints.

Class 17: Adhesive sealants for general use; joint sealants; sealants for repairing leaks in water cooling systems; sealants for use in the building industry.

(sealants for use in the building industry is only mentioned in European Trade Mark Registration No 11 792 124).

Following a limitation of the goods in Class 1 requested by the applicant on 19/07/2017, the contested goods and services are the following:

Class 1: Chemicals for use in industry, namely magnesium sulphate.

The use of ‘in particular’ and ‘namely’

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 and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The Nice Classification serves only administrative purposes

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 1

The contested goods are, following a limitation by the applicant, dated 19/07/2017, magnesium sulfate, an inorganic salt also known as Epsom salt. This is a raw material used for several purposes in particular in the areas of pharmaceuticals, cosmetics and fertilizers. However it can be used also as an ingredient in adhesives.

The goods of the opponent in Classes 1 and 17 are mainly adhesives and sealants, which are processed goods with a specific purpose to make objects stick together or prevent leakage. The opponent’s goods in Class 2 contain paints and varnishes etc. which are processed goods with the purpose of colouring objects and/or protect them from corrosion and wear etc.

As for their nature and composition they are different as the contested goods are raw materials and the goods of the earlier mark more or less finished materials, the have a different function and do often have a different physical condition and appearance.

The purpose of the goods covered by the earlier mark is to act as adhesives, paints or sealants. The purpose of the contested good is mainly to be used in pharmaceuticals or in agriculture as mentioned above. It may, however, also act as a desiccant, to create a state of dryness. Even though this may be of advantage to adhesives and sealants the purpose is still different.

The relevant public differ, in the fact that the majority of the public in relation to the contested goods are in the production industry of pharmaceuticals, cosmetics and artificial nourishment for the soil, whereas the relevant public of the opponent’s goods will be those parts of the industry interested in the production of sealants, adhesives and paints. The distribution channels will be different and the goods sold by unconnected companies in different types of enterprises.

Although the goods of contested sign may be an ingredient in the goods of the earlier mark, this does not necessary make them complementary, also taking into account their different purpose. The one good is not considered a necessity in relation to the other. They are not being offered together and the relevant public will not consider this goods originating from the same companies.

Neither are the goods in competition as a person would not have to make a choice between the one or the other as they have different function as mentioned above.

Furthermore, it must be noticed that in most cases, the mere fact that one product is used for the manufacture of another it is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (judgment of 13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51).

Taking all relevant factors into consideration, the Opposition Division finds that the contested goods are dissimilar to those of the opponent’s earlier marks.

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 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

Michele M. BENEDETTI-ALOISI

Torben Niels-henrik Engholm KRISTENSEN

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.