OPPOSITION No B 3 060 039

Solaris Plant SRL, Str. Valea Cascadelor nr 21, sector 6, Bucarest, Romania (opponent), represented by Rodall SRL Agentie de Proprietate Industriala, Str. Polona nr 115, bl 15, sc A, apt 19, sector 1, 010497 Bucarest, Romania (professional representative)

a g a i n s t

Bartłomiej Pankowski, Polna 9G, 05-500 Mysiadło, Poland (applicant), represented by Brandpat Patent and Trademark Attorneys Chlebicka Czyz Galazkiewicz Ziolkowski Professional Partnership, Hoza 29/31 Apt 31, 00-521 Warszawa, Poland (professional representative).

On 13/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 039 is upheld for all the contested goods.

2. European Union trade mark application No 17 785 213 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 17 785 213 ‘SOLARIS’ (word mark). The opposition is based on, inter alia, Romanian trade mark registration No 125 338 (figurative mark). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Romanian trade mark registration No 125 338 (figurative mark), since it covers a broader scope of relevant goods.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5: Pharmaceutical and veterinary products; hygienic products for medicine; dietetic substances for medical use, infant formula; patches and dressings; materials for teeth filling and for dental castings; disinfectants; products for the destruction of harmful animals; fungicides, herbicides; side products resulting from the treatment of cereal grains for medical purposes; seeds for pharmaceutical use; medical oils; teas for medical purposes.

The contested goods are the following:

Class 21: Traps (electric -) for insects; traps (non-electric -) for insects; traps for vermin; devices for attracting and killing insects; devices for pest and vermin control.

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.

The contested traps (electric -) for insects; traps (non-electric -) for insects; traps for vermin; devices for attracting and killing insects; devices for pest and vermin control are similar to the opponent’s products for the destruction of harmful animals. These goods are in competition with each other and may also be complementary (e.g. a product to be used in a trap) because they have the same purpose; to eradicate insects, harmful animals or other vermin. They are aimed at the same public, who can use both traps and/or products (e.g. sprays). They coincide in the same distribution channels and can be produced by the same companies.

The applicant refers to previous decisions to support his arguments in relation to the non-complementarity of the goods at issue. 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.

In the present case, the previous cases referred to by the applicant (13/12/2004, T‑8/03, Emilio Pucci, EU:T:2004:358; 15/12/2010, T‑331/09, Tolposan, EU:T:2010:520), are not relevant to the present proceedings. The goods in Classes 5 and 21, which are compared in the present case, are not equivalent to the comparison of goods included in the aforementioned decisions (Classes 18 and 24, or pharmaceutical products in Class 5). As explained above, apart from being sold in the same commercial establishments, more factors are relevant for finding similarity between the goods, for example, the same purpose of eradicating insects, same public or same producer. Therefore, the criteria for assessing the similarity between the goods are not the same.

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 similar are directed at the public at large. The degree of attention is considered to be average. Contrary to the applicant’s observations, the goods found to be similar mainly consist of electric traps or devices for killing insects that are normally distributed in supermarkets at a reasonable price. Therefore, the attention of the consumer is not necessarily high.

c) The signs

	SOLARIS
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 element ‘SOLARIS’, contained in both signs, does not exist in Romanian but the majority of the relevant public may associate this term with the Romanian word ‘solar’, referring to the sun, or denoting energy derived from the sun’s rays. Since this meaning has no connection with the relevant goods in Classes 5 and 21, it is distinctive. Additionally, for a small part of the relevant public the element ‘SOLARIS’ will be meaningless, and therefore also distinctive.

Even though the verbal element ‘SOLARIS’ is depicted split into three levels (‘SO’ on the top, ‘LA’ in the middle and ‘RIS’ at the bottom) in the earlier mark, the public reads from left to right and from top to bottom, thus, this representation and the slight stylisation of its letters does not prevent consumers from reading ‘SOLARIS’.

The figurative elements of the earlier mark consist of a circular device containing mixed seeds and leaves in various colours as a background for the verbal element. These figurative elements have an average degree of distinctiveness due to the absence of any link, whether direct or indirect, with the goods concerned.

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, contrary to the applicant’s observations, the figurative element has a lower impact on the consumer.

The earlier mark has no element that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the element ‘SOLARIS’, which is the only verbal element of the earlier mark, and composes the whole of the contested sign. However, the signs differ in the specific representation of the word element ‘SOLARIS’ and in the figurative elements of the earlier mark. However, this will have a lower impact on the consumer. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‛SOLARIS’, present identically in both signs. Therefore, the signs are aurally identical.

Conceptually, the majority of the public will associate the term ‘SOLARIS’ with the Romanian word ‘solar’, included in both signs, with the same meaning. Therefore, for the majority of the relevant public the signs are conceptually highly similar.

Although the public in the relevant territory will perceive the meaning of the mixed seeds and leaves of the earlier mark, as explained above, for part of the public the element ‘SOLARIS’ is meaningless and therefore, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for a small part of the relevant public.

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 goods at issue are similar and target the general public with an average degree of attention. The signs are visually similar to an average degree, aurally identical and conceptually highly similar for the majority of the public, but not conceptually similar for a minority of the public. The distinctiveness of the earlier mark is normal.

The visual differences identified between the signs are clearly insufficient to enable the average consumer to safely distinguish between the commercial origin of the goods covered by the trade marks at issue. In this regard, it must be pointed out that it is common practice on the relevant market for undertakings to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised in logos. Therefore, when encountering the conflicting signs, the relevant public will mentally register the fact that they share the verbal element ‘SOLARIS’, and perceive the contested sign as a variation of the earlier mark, or vice versa.

Consequently, the public may attribute the same (or an economically linked) commercial origin to the relevant goods, taking into consideration the normal degree of attention paid.

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 Romanian trade mark registration No 125 338. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Romanian trade mark registration No 125 338 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 right 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, 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

Eva Inés PÉREZ SANTONJA

Cristina SENERIO LLOVET

ALICIA BLAYA ALGARRA

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.