OPPOSITION No B 2 973 777

Riwax-Chemie AG, Industrie West, Tannholzstrasse 3, 3052 Zollikofen, Switzerland (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

ASV Germany GmbH, Alte-Post-Passage 5, 49577 Ankum, Germany (applicant), represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).

On 28/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 973 777 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 16 886 806 for the figurative mark . The opposition is based on international trade mark registration No 1 115 708 for the figurative mark , designating the European Union. 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 and services

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

Class 1: Industrial chemicals, particularly decolorants, antifreeze, impregnating products.

Class 2: Colorants and lacquers, anti-rust preparations for preservation, anti-corrosive preparations.

Class 3: Bleach and laundry preparations, cleaning preparations, degreasers and grinding preparations, in particular polishing wax, washing liquids, polishing preparations, polishing paper, shining preparations, cleaning

preparations; soap; rust removing preparations; all the aforementioned goods contain a preserving agent; cosmetics.

Class 4: Industrial oils and greases, in particular penetrating oils and lubricants.

Class 5: Deodorants other than for personal use, namely air fresheners or air freshening preparations.

Class 7: Machines, in particular finishing machines, polishing machines and spray guns for paint, machines and apparatus for cleaning.

Class 8: Hand tools and implements (hand-operated), in particular implements for polishing and implements for painting.

Class 16: Printed matter, namely user manuals and manuals for educational purposes.

Class 35: Business management and organization consultancy; assistance with respect to conducting business affairs; advertising; sales promotion for others.

Class 41: Education, training.

The contested goods and services are the following:

Class 1: Synthetic and mineral oil-based chemicals used in industry, in particular for manufacturing lubricants, and chemical additives for lubricants, lubricating greases, engineering oils and for engine, transmission, compressor and hydraulic oils, and additives for fuels, in particular petrol and diesel fuels; chemical additives for coolants; anti-freezing preparations for coolants and for windscreen washer fluids; antifreeze.

Class 4: Lubricants; industrial oils and greases, including engine, transmission, compressor and hydraulic oils; contact oils and contact greases for technical purposes; lubricants, namely lubricating lacquers, non-chemical oil additives and additives for motor fuels (in particular for petrol and diesel fuel); non-chemical additives for industrial greases, industrial oils, motor oils, gear oils, compressor oils and hydraulic oils; fuels (including motor spirit) and illuminants; mineral oils.

Class 35: Retailing and wholesaling, including via the internet, in the fields of: synthetic and mineral oil-based chemicals used in industry, in particular for manufacturing lubricants, and chemical additives for lubricants, lubricating greases, engineering oils and for engine, transmission, compressor and hydraulic oils, and additives for fuels, in particular petrol and diesel fuels, chemical additives for radiator fluid, anti-freezing preparations for radiator fluids and for water in windscreen washer installations, antifreeze, lubricants, industrial greases and industrial oils, including motor, transmission, compressor and hydraulic oils, contact oils and contact greases, lubricants, namely lubricant varnishes, non-chemical oil additives, and additives for fuels (in particular for petrol and diesel fuels), non-chemical additives for industrial greases, industrial oils, engine oils, transmission oils, compressor oils and hydraulic oils, fuels (including motor spirit) and illuminants, mineral oils.

Some of the contested goods and services are identical (e.g. synthetic and mineral oil-based chemicals used in industry, in particular for manufacturing lubricants, and chemical additives for lubricants, lubricating greases, engineering oils and for engine, transmission, compressor and hydraulic oils, and additives for fuels, in particular petrol and diesel fuels in Class 1) or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are partly directed at the public at large, for example fuels (including motor spirit) in Class 4, and partly at business customers with specific professional knowledge or expertise, for example chemical additives for coolants in Class 1.

The degree of attention is considered to vary from average, for example for antifreeze in Class 1 and lubricants in Class 4, to high, as some of these goods are infrequently obtained for a specific purpose, the nature and conditions of these goods/services may be quite specialised or when some of these goods are not chosen carefully, they can damage your vehicle.

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 word ‘RIWAX’, written in a slightly fancy uppercase bold and blue typeface. The contested sign is a figurative mark consisting of the word ‘VIMAX’, written in a slightly fancy uppercase bold and white/grey typeface with part of the letter ‘V’ and ‘X’ in red.

The earlier mark ‘RIWAX’ will be seen as a whole without dissecting its elements and, as it does not have any particular relationship with the relevant goods and services, it is normally distinctive. The contested sign ‘VIMAX’ will be seen as a whole without dissecting its elements and, as it does not have any particular meaning for the goods and services at stake, it is normally distinctive. The marks will not be split into elements, such as ‘RI’ and ‘WAX’ and ‘VI’ and ‘MAX’, as there is no reason to split those terms in that way. The syllables ‘RI’ and ‘VI’, if split off, would make no sense. Rather the word elements ‘RIWAX’, as well as ‘VIMAX’, both form an indivisible unit.

Visually and aurally, the signs coincide in the letters ‘*-I-*-A-X’. However, they differ in the first and third letters ‘R’ and ‘W’ of the earlier mark versus ‘V’ and ‘M’ of the contested sign and in the different typefaces. Even though these typefaces are only slightly fancy, there is still a striking difference in the use of the colours, shadings, etc.

It is important to point out 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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the fact that the first and third letters of the signs, which fall rather at the beginning of the marks, are entirely different, is relevant for the comparison.

The letters that the signs have in common do not constitute independent elements in the signs and the differing letters will clearly be noticed by the relevant consumers. Although the signs have some sounds in common, they have different letters, in particular at the beginnings that introduce rather striking differences. The letter ‘R’, which is an alveolar semivowel, and the letter ‘V’, which is a voiced labio-dental fricative, give a totally different sound at the beginning, where the consumer focuses first. Furthermore, the following consonants have a different sound ‘W’ (a bilabial semivowel) versus ‘M’ (a bilabial nasal).

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

Conceptually, neither of the signs as a whole 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 to a very low degree 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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as a result of its long standing and intensive use in the European Union in connection with all the goods and services for which it is registered. The opponent states that it is a Swiss-based company that was founded in 1967 with subsidiaries in the Netherlands and the Czech Republic. The sign ‘RIWAX’ has always been and still is used prominently with the company’s name, as well as being a trade mark for several goods and services. ‘Riwax’ has an international distribution network in over 35 countries including the European Union. It is a leading manufacturer and supplier of especially car care products. The product range includes cleaning and care products for cars, bicycles, boats, trains and aircraft.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The opponent submitted on 12/06/2018 the following evidence:

 A brochure, dated November 2014, mentioning the figurative mark ‘RIWAX’ for the following goods: car wash products, car care products for motor vehicles, public transport, industry, aircrafts, shipyards, D-I-Y-products for home application for cleaning and polishing cars and two-wheelers, polishing products for vehicles, boats, aircrafts, trains, two-wheels.

 Six promotion leaflets for consumers in Belgium, displaying the figurative mark ‘RIWAX’ and underneath the slogan ‘beauty for cars’, dated in 2017, for car care products.

 A document showing all kinds of products, such as ‘car shampoo’, ‘wax shampoo’, ‘insect clean’, ‘wheel cleaner’, ‘chroom and aluminium polish’, ‘black and shine’, ‘tire gloss gel’, ‘protect shield (cabrio spray)’, ‘spray wax’, ‘wax polish’, ‘paint cleaner’, ‘star wax’, ‘quick shine set’, ‘pearl protect gel’, ‘mat clean’, ‘mat protect’, ‘cabin clean’, ‘glas clean’, ‘moto cleaner’, ‘moto shine’, ‘polishing cloth’, ‘washing glove’, ‘waterblade’, ‘chamois’, ‘sponge’, ‘bucket’, ‘flowpacks’, ‘pad applicator’, ‘ice scaper’, ‘window cleaner winter’, ‘silicone marker’, all displaying the mark ‘RIWAX’.

 A document showing the retailers where the relevant products, that bear the sign ‘RIWAX’, can be ordered. The document shows many Member States of the European Union, even worldwide, with the information (such as an address, phone number and e-mail) of the subsidiary companies in Germany, France, Belgium, Estonia, Czech Republic, Hungary and China.

 Pictures from the following trade fairs: ‘Automechanika Frankfurt 2016’, ‘Mazedonien 2017’, ‘Expo Autopromotec Italien 2017’, ‘METS Holland 2017’ displaying the figurative mark ‘RIWAX’.

 Several advertisements for the Netherlands, dated 2011, promoting the trade mark ‘RIWAX’ for several products, such as ‘polishing cloth’, ‘washing glove’, ‘bucket, ‘waterblade’, ‘chamois’, ‘polishing box’, ‘excentric machine’, ‘polishing pad black’, ‘wax polish’, ‘star wax’, ‘high-end wax protector’, ‘quickshine set’, ‘spray wax’, ‘hand sprayer’, ‘clean clay cloth’, ‘microfiber cloth’, ‘spray finish’, ‘glasclean’, ‘insect spray’, ‘nautic line products’.

 Several invoices, dated 08/12/2017, 25/04/2018, 18/12/2017, 22/02/2018, 12/07/2017, 27/04/2018, 19/09/2017, 12/04/2018, 05/03/2018, 24/01/2018, 23/05/2018, 04/05/2018, 24/01/2018, 31/01/2018, 27/04/2018, 04/10/2017, 16/01/2018, 22/05/2018, 09/03/2018, 29/03/2018, 10/01/2018, 21/07/2017, 03/05/2018, 07/12/2017, 07/05/2018, 31/10/2017, 20/03/2018, 13/04/2018 from the opponent to several clients in the Netherlands, Belgium, Denmark, Germany, Estonia, Finland, France, Iceland, Italy, Malta, Austria, Romania, Russia, Sweden, the Czech Republic, Hungary, Cyprus, showing a considerable number of sales, the amount of which cannot be revealed for confidentiality reasons. On top of the invoices appears the figurative mark ‘RIWAX’ and the products are all kinds of vehicle care products.

 An internal document concerning a table (coming from the opponent), showing the sales numbers (in CHF) of the mark ‘RIWAX’ that have been sold in numerous countries of the European Union, such as Belgium, Denmark, Germany, Estonia, Finland, France, the Netherlands, Italy, Malta, Austria, Romania, Sweden, the Czech Republic, Hungary and Cyprus in the period of 2016 to 2018. The number of sales mentioned in this table is considerable but, for reasons of confidentiality, neither the amounts in this table, nor the table itself, can be displayed.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

There is no information at all about the degree of recognition of the mark ‘RIWAX’ and its general position in the market. The opponent has not provided any material with an indication of figures, in the form of, for example, official annual reports including turnover or revenue figures, for the trade mark ‘RIWAX’, nor is there any objective (as the table is an internal document from the opponent) indication concerning the volume of sales, the market share of the trade mark or the extent to which the mark has been promoted. Even though the opponent submitted a table with sales figures and invoices and it mentions in its observations that it is a leading manufacturer and supplier of especially car care products, this presence in the market since 1967 has never been attested by sufficient evidence, as the vast majority of the evidence refers only to the period of 2016-2018, let alone any objective evidence, which is not only coming from or mentioned by the opponent himself. Furthermore, the pictures of the trade fairs are not put into a context and the Opposition Division does not know the importance of those fairs, how many people have come into contact with the marks at those fairs, etc. As a result the evidence does not show the degree of recognition of the trade mark ‘RIWAX’ among the relevant public; nor does it show that the trade mark is known by a significant part of the relevant public, but it rather shows that the mark ‘RIWAX’ has been used in the market. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that its trade mark has a higher degree of distinctiveness through its use.

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 in relation to any of the goods and services at hand 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

A likelihood of confusion (including a likelihood of association) 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.

All the contested goods and services are assumed identical to the goods and services of the earlier mark and are directed at both the public at large and a more specialised public whose level of attention varies from average to high. The earlier mark, as a whole, has a normal degree of distinctiveness.

The marks are visually and phonetically only similar to a very low degree and the conceptual aspect remains neutral. Although the signs coincide in some letters/sounds, comparing the marks in overall terms, the Opposition Division finds that there are sufficient differences in the additional letters and sounds, as well as in the fact that the differentiating letters/sounds are at the beginning and different colours and shadings are used, to outweigh the few similarities between the signs.

The Opposition Division is of the opinion that the dissimilarities are sufficient to safely exclude a likelihood of confusion including a likelihood of association. It can reasonably be concluded that consumers will clearly be able to distinguish the marks in dispute and will perceive them as coming from different undertakings.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent refers to previous decisions of the Office to support its arguments, in particular to case B 2 153 495 of 23/10/2014, confirmed by the BoA in decision R 3254/2014-4 of 30/06/2015. 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). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. The previous case, namely B 2 153 495 (contested sign) versus ‘RIWAX’ (earlier word mark) referred to by the opponent is not relevant to the present proceedings. First of all, the earlier mark is a word mark, while in the case at hand it is a figurative mark with colourful lettering, and, secondly, the marks coincide in the letters ‘IWAX’ (four out of five letters of the verbal elements) and only differ in their first letters, while in the case at hand they do not only differ in the first letters, but also in their third letters. For these reasons, this case is not relevant and the opponent’s arguments in this regard have to be set aside.

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

Saida CRABBE

Chantal VAN RIEL

Victoria DAFAUCE

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.