OPPOSITION No B 2 990 235

Tomil s.r.o., Gen. Svatoně 149/IV, 566 01, Vysoké Mýto, Czech Republic (opponent), represented by Rott, Růžička & Guttmann a Spol., Vinohradská 37/938, 120 00, Praha 2, Czech Republic (professional representative)

a g a i n s t

Kelroy Holding BV, Morgenster 13, 2992 CJ, Barendrecht, Netherlands (applicant), represented by Bastiaan Willem Jasper van den Bogaard, Lange Heul 193, 1403 NJ, Bussum, Netherlands (professional representative).

On 08/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 990 235 is upheld for all the contested goods.

2. European Union trade mark application No 16 918 211 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 918 211 (figurative mark). The opposition is based on, inter alia, international trade mark registration No 1 089 011 (figurative mark) designating Austria, Lithuania, Romania, Latvia, Bulgaria, Poland, Italy, Hungary, Benelux, Croatia, Germany and Slovenia. 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 trade marks on which the opposition is based, inter alia, international trade mark registration No 1 089 011.

In the present case, the date of filing of the contested trade mark is 26/06/2017.

Earlier trade mark No 1 089 011 is an international registration designating the individual Member States of Austria, Lithuania, Romania, Latvia, Bulgaria, Poland, Italy, Hungary, Benelux, Croatia, Germany and Slovenia. Each Member State has either a 12- or 18-month deadline to issue a provisional refusal under the Madrid Protocol. Where a provisional refusal is issued within this deadline, the date that will be decisive in determining whether the mark is subject to the proof of use obligation is the date when the proceedings leading to the provisional refusal are concluded, namely when the Statement of Grant of Protection is issued. Additionally, where a provisional refusal has not been issued, but a Statement of Grant of Protection is issued prior to the expiry of the 12- or 18-month deadline, this will be the decisive date.

For the designation of some of the individual Member States, for example, Italy and Bulgaria, the Statement of Grant of Protection was published by WIPO on 17/11/2016 and 08/11/2012, respectively. As correctly pointed out by the opponent, it can be inferred from these dates that the mentioned earlier mark designations had not been protected for at least five years on the relevant date. Therefore, these designations were not under the proof of use requirement and the opponent did not request proof of use for them.

In view of this, since the opposition is based on more than one earlier trade mark and territories, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 089 011 designating Italy and Bulgaria.

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 3: Soap, liquid soap; shampoos, hair embellishing and hair care preparations; body shampoos; foam baths; cosmetic products for body and face care; beauty creams; bleaching preparations; laundry preparations, including in liquid form; preparations for rinsing and softening clothes; liquid preparations for cleaning and washing; dentifrices; cleaning, polishing, degreasing and abrasive preparations; cleaning, polishing and abrasive preparations used for automobiles; cosmetics for automobiles; lotions for cleaning purposes, cleansing milk for toilet purposes; toilet water; cosmetic products for children, all these products with the exception of the stain removing preparations in liquid, paste and powder form.

The contested goods are the following:

Class 3: Cleaning preparations for automobile tires and wheels.

Contested goods in Class 3

The contested cleaning preparations for automobile tires and wheels are included in the broad category of, or overlap with, the opponent’s cleaning, polishing and abrasive preparations used for automobiles … , all these products with the exception of the stain removing preparations in liquid, paste and powder form. Therefore, they are identical.

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 found to be identical are directed both at the public at large as well as at professional public, such as mechanics, car wash or garage holders. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Italy and Bulgaria.

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 ‘DEVIL’ represented in a slightly stylised font in black uppercase letters with a white outline. Above the word, and in particular, above the letter ‘E’, is the smaller verbal element ‘Dr.’ surrounded by a device element resembling a pointed star.

The contested sign is also figurative and consists of the verbal elements ‘Alloy’ and ‘Devil’ placed one above the other, represented in a slightly stylised font in grey title-case letters. Below the word elements is a fanciful representation of a humanised creature, which resembles a devil. It is in red colour with black outlines, has horns and is placed on the background of a flaming car wheel represented in grey, black, red and yellow.

Part of the public with (some) knowledge of English will understand the word ‘DEVIL’ present identically in the signs at issue as designating the chief spirit of evil and enemy of God. Also, it is very likely that even the relevant public with no knowledge of English will understand the foreign word ‘DEVIL’ in the signs, since it is fairly close to the equivalent words in the official languages in the relevant territories (‘diavol’ in Bulgarian and ‘diavolo’ in Italian). Furthermore, this meaning is reinforced by the image of a devil’s head in the contested sign. The abbreviation ‘Dr.’ in the earlier mark will be understood by the relevant public as an abbreviated form of ‘Doctor’. The meaning of the word combinations ‘Dr. Devil’ is no different than the sum of the meanings of the constituent elements. Whether understood or not, all these elements (devil and Dr.) have no descriptive, non-distinctive, allusive or otherwise weak meaning in relation to the goods and their inherent distinctiveness is normal.

The English word ‘alloy’ (metal that is made by mixing two or more types of metal together) of the contested sign will be understood only by those members of the public with a good command of English. For them, it will be perceived as a descriptive indication of characteristics of the goods (meant for cleaning alloy wheels) and therefore, its distinctiveness is very low, if any. However, for the majority of the relevant public, ‘alloy’ has no meaning, including in relation to the goods and, therefore, its inherent distinctiveness is normal.

As regards the device element of contested sign, in view of the nature of the goods, a part of the public that recognises a car wheel may see this element as weak, as it may indicate characteristics of the goods. However, the distinctiveness of the device element as a whole is normal, as the flaming devil’s head protruding through a wheel is quite fanciful.

As regards the figurative elements of the signs in general, account must be taken in this case that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, in view of the composition of the signs, the verbal elements are the ones that will be used to refer to them.

As to the dominant elements, the element ‘DEVIL’ in the earlier mark is the dominant element as it is the most eye-catching. The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the common element ‘DEVIL’, which has normal inherent distinctiveness, and is the dominant element in the earlier mark and is an element with an independent distinctive role in the contested sign. In addition, the common element ‘DEVIL’ is represented in relatively similar letters, wherein the initial letter ‘D’ is bigger than the remaining letters in both signs and the word has similar upward inclination. The signs differ in the smaller element ‘Dr.’ as well as the less important figurative elements of the earlier mark (the device resembling a star around the element ‘Dr.’ and the positioning of the elements). As regards the contested sign, it differs from the earlier mark in the figurative elements (the colours, the specific positioning of the elements and the fanciful devil device), which however have less impact than the verbal elements. The signs also differ in the verbal element ‘Alloy’ of the contested sign, which is inherently distinctive, or may be weak in relation to a small part of the relevant public.

While it is indeed the case that the signs contain the additional verbal elements ‘Dr.’ in the earlier mark and ‘Alloy’ in the contested sign and these elements have a normal degree of distinctiveness (the latter for the public with no knowledge of English), account is taken of the fact that the coinciding element in the signs is distinctive and it is the dominant element in the earlier sign. It is an element with an independent distinctive role in the signs as well.

Therefore, bearing in mind the mentioned similarities and differences, the relevant factors and their respective weight in the signs, it is considered that the signs are visually similar to a lower than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛DEVIL’, present identically in both signs. The pronunciation differs in the sound of the word ‘Dr.’ of the earlier sign, which has no counterpart in the contested mark and in the sound of the word ‘Alloy’ of the contested sign, which has no counterpart in the earlier mark. Although the signs differ in their initial elements, they coincide in full in their second element. Therefore, the signs are similar to an average degree. The degree of aural similarity is higher than average as regards the English-speaking public for which the impact of the word ‘alloy’ will be reduced due to its meaning.

Conceptually, as indicated above, a sizable part of the public will associate the element ‘DEVIL’ included in the signs with the same meaning. Furthermore, as mentioned above, a small part of the public with a good command of English will understand the meaning of the English word ‘alloy’. The abbreviation ‘Dr.’ in the earlier mark will be understood by the entire relevant public as ‘Doctor’. The words ‘devil’ and ‘alloy’ as such have no meaning in Italian and Bulgarian and will not be understood by the part of the public with no knowledge of English language. The meanings of the additional figurative elements in the marks have been defined above.

Consequently, as regards a fairly sizable part of the public, which will associate the signs with the same concept of ‘devil’, reinforced by the image of a devil in the contested sign, the signs are conceptually similar to an average degree. As regards the remaining part of the public for which ‘devil’ is meaningless, since the signs will be associated with different meanings, they are not conceptually similar.

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 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.

e) Global assessment, other arguments and conclusion

The contested goods are identical to the opponent’s goods and they are directed at the public at large and at professional consumers. The degree of attention may vary from average to high.

The earlier trade mark and the contested sign are visually similar to a lower than average degree. They are aurally similar to an average degree in relation to part of the public and similar to a higher than average degree in relation to another part of the public. The signs are conceptually similar to an average degree for a fairly sizable part of the examined relevant public and they are not conceptually similar for the remaining part of relevant public.

The applicant argues that the word element ‘Alloy’ appears in an initial position and the figurative element of a devil placed on the background of a flaming wheel are definitely not negligible and are immediately noticeable and memorable. While this may be the case, the Opposition Division notes that, at the same time, due account should be taken of the fact that the similarities between the signs occur in the common and normally distinctive element ‘DEVIL’, which constitutes the dominant element of the earlier mark and represents an element with an independent distinctive role in the both signs.

Although there are certain visual, aural and conceptual differences between the signs, it is considered that the circumstances of the case are such that there is a risk of likelihood of confusion/association between the marks. This is because the coinciding element in the signs plays an independent distinctive role in both signs. It is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of goods, which it designates. Therefore, consumers could be led to believe, for example, that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

The Opposition Division highlights the fact that, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUMTR there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes owing to their similarities that they are derived from the same undertaking or indeed an economically-linked undertaking.

In view of the foregoing and taking into account all the relevant circumstances of the case, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes, that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public in relation to identical goods. This is likely to be the case even when the public may exercise a higher level of attention, as the similarity of the signs is sufficient for the consumers, including the professional public, to consider that the respective identical goods have the same origin.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 089 011 designating the Italy and Bulgaria. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right IR No 1 089 011 designating the Italy and Bulgaria leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Liliya YORDANOVA

Anna MAKOWSKA

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.