OPPOSITION No B 2 977 059

Brillux GmbH & Co. KG, Weseler Str. 401, 48163, Münster, Germany (opponent), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellchaft MBB, Bleichstr. 14, 40211, Düsseldorf, Germany (professional representative)

a g a i n s t

Pinturas Cin Canarias S.A. Unipersonal, P.I. de Güimar Manzana XIII Parcela 2, 38059, Guimar, Spain (applicant), represented by Plaza y Cía, Calle Orense 64 1ºD, 28020, Madrid, Spain (professional representative).

On 14/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 977 059 is partially upheld, namely for the following contested goods:

Class 2: Paints and washes; varnish; lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; metals in foil and powder form for use in painting, decorating, printing and art.

2. European Union trade mark application No 16 798 605 is rejected for all of the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 798 605 for the word mark ‘SANDOKRYL‘. The opposition is based on European Union trade mark No 4 315 586 for the word mark ‘Sensocryl’. 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.

a) The goods

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

Class 2: Aqueous dispersion wall paints.

The contested goods are the following:

Class 2: Paints and washes; varnish; lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.

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.

The contested paints and washes include, as broader categories, or overlap with the earlier aqueous dispersion wall paints. Therefore, they are identical.

The contested preservatives against rust and against deterioration of wood overlap with the earlier aqueous dispersion wall paints. Therefore, they are identical.

The applicant’s varnish; lacquers; mordants; colorants; metals in oil and powder form for use in painting, decorating, printing and art are at least similar to the opponent’s aqueous dispersion wall paints as they coincide in distribution channels, relevant public and producers. Some of them also share the same purpose and method of use.

The contested raw natural resins are not similar to the opponent’s aqueous dispersion wall paints. In most cases, the mere fact that one product is used for the manufacture of another will not be 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). According to case-law, the raw materials subjected to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, judgment of 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (judgment of 09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). Therefore, the applicant’s raw natural resins are dissimilar to the opponent’s aqueous dispersion wall paints.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs

Sensocryl	SANDOKRYL
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).

Both signs are word marks consisting of one word in upper- and title-case letters respectively. In case of word marks, it is the word as such that is protected and not its written form. Therefore, it is immaterial whether the signs are depicted in upper- or lower-case letters or in a combination thereof.

The words forming both trade marks considered as a whole are meaningless. Therefore, they are fully distinctive for the relevant goods.

Visually, the signs coincide in the first, third, fifth and three last letters (S-*-N-*-O-*-R-Y-L). However, they differ in the rest of the letters e/a, s/d and c/k.

Therefore, the signs are visually similar to an average degree.

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 letters S-*-N-*-O-C/K-R-Y-L, present identically in both signs, since for the majority of the public the sound of the C and K will be the same. For a part of the public, such as the French-speaking part of the public, they also coincide in the sound of the second letters a/e. They further coincide in the length, rhythm and intonation. However, they differ in the rest of the sounds thereof.

Therefore, the signs are aurally similar to an average degree for a part of the public and even highly similar for another part.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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 distinctiveness of the earlier 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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The global assessment of 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).

As concluded above, the goods have been considered partly identical and similar and partly dissimilar. The earlier mark has a normal degree of distinctiveness for the relevant public. The relevant public consists of the public at large and business customers with specific professional knowledge or expertise, who will pay an average degree of attention.

The signs are visually similar to an average degree and aurally similar to an average degree for a part of the public and to a high degree for another (i.e. French-speaking public). They do not have a concept that might help to differentiate between them. The difference in a few letters/sounds is not sufficient to outweigh the strong similarities between the marks due to the identical presence of the remaining elements.

In the view of all the foregoing, and in particular the principle of interdependence, there is a likelihood of confusion on the part of the public. Therefore, the opposition is partially well founded on the basis of the earlier European Union trade mark registration No 4 315 586. It follows from the above that the contested mark must be rejected for the goods found to be identical or at least similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Helen Louise MOSBACK

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.