OPPOSITION No B 3 059 221

Quimica 21, S.L., Pol. Ind. Puente Alto, parcela 13, 03300 Orihuela (Alicante), Spain (opponent), represented by Lerroux & Fernández-Pacheco, Claudio Coello, 124 4º, 28006 Madrid, Spain (professional representative)

a g a i n s t

Brucha Ges.m.b.H., Rusterstr. 33, 3451 Michelhausen, Austria (applicant), represented by Piplits & Mackinnon Rechtsanwälte, Kärntner Str. 25, 1010 Wien, Austria (professional representative).

On 04/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 221 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 877 804 (figurative mark ), namely against all the goods in Classes 1 and 17. The opposition is based on European Union trade mark registration No 10 625 796 (word mark ‘Q21-TEC’). 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: Fire-extinguishing preparations, fire-extinguishing compositions, chemical elements, compounds and preparations to be used in fire-extinguishers and for fire extinguishing purposes, chemical reagents to be used in fire-extinguishers and for fire extinguishing purposes, chemicals used in industry, science and photography to be used in fire-extinguishers and for fire extinguishing purposes; tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; propellant gases for aerosols, biological and bacteriological preparations, bases (chemicals), fireproofing preparations, toxic gas neutralisers.

Class 35: Import and export services; Wholesaling, retailing and selling via global computer networks of fire extinguishing products and chemicals used in industry, science and photography to be used in fire-extinguishers and for fire extinguishing purposes; Goods and sales promotion (for others); Sole agency, including via advertising matter and online advertisements; Display on electronic sites accessed via global communication computer networks; Professional business consultancy services; Organisation of exhibitions for commercial or advertising purposes, including via global computer networks; Advertising by all means of diffusion, relating to all kinds of goods or services in particular all kinds of fire extinguishing products and chemicals used in industry, science and photography to be used in fire-extinguishers and for fire extinguishing purposes.

Class 39: Distribution, transport and storage of all kinds of goods in particular all kinds of fire extinguishing products and chemicals used in industry, science and photography to be used in fire-extinguishers and for fire extinguishing purposes.

The contested goods are the following:

Class 1: Chemical substances, chemical materials and chemical preparations, and natural elements, except for fire extinguishing preparations to be used in fire extinguishers.

Class 17: Insulation and barrier articles and materials.

Some of the contested goods are identical 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 were identical to those of the earlier mark 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 directed at the public at large as well as at business customers with specific professional knowledge or expertise.

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

Q21-QTEC
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).

In the case of word marks, the word as such is protected and not its written form. Therefore, it is irrelevant whether word marks are represented in small or capital letters.

The earlier mark is a word mark composed of the distinctive element ʻQ21ʼ connected by a hyphen to verbal element ʻQTECʼ which might be associated, at least by a part of the relevant public (e.g. the English-speaking one), with quality technology.

It has been confirmed by various judgements and decisions that ʻTECʼ is non-distinctive, see for example judgment of 14/04/2005, T-260/03, ‘Celltech’, § 32 – annulling the appeal decision for other reasons; and decisions of 10/01/2012, R 889/2011-4, ‘IONTEC’, § 14; of 25/08/2011, R 337/2011-4, ‘CRYPTOTEC’, § 13; and of 02/07/2012, R 443/2012-5, ‘SILENT_TECH’, § 16).

Consequently, ʻQTECʼ is laudatory and descriptive (based on technology, produced with quality technology and providing quality technology) for all the goods and services at hand, so that for this part of the public this element is non-distinctive.

The other part of the public will most probably not associate the element ʻQTECʼ with any meaning and, therefore, this element is distinctive for this part of the public.

‘Q21-’ does not have any meaning even though, obviously, the included numerical will be understood as such. This element is distinctive.

Contrary to the opponent’s allegations, the earlier mark has no element that could be considered clearly more dominant than other elements.

The contested mark is a figurative mark where the figurative elements are confined to the specific representation of small and capital letters of the dominant element ʻiQTecʼ and the placement of the italicized ʻfoam technologyʼ in a smaller font beneath the aforementioned ʻiQTecʼ.

The element ʻfoam technologyʼ is non-distinctive for a part of the relevant public, namely at least for the English-speaking, because it describes the relevant goods or a characteristic thereof; another part of the public, e.g. the German-speaking part, might only understand the element ʻtechnologyʼ due to its proximity of the counterpart in that language or because the term ‘technology’ widely known by professionals throughout the European Union. However, ‘foam’ is meaningless for the non-English-speaking part of the public and is, thus, distinctive.

As regards the element ʻiQTecʼ, the same considerations as described regarding the earlier mark’s element ʻQTECʼ do apply here. Additionally, the contested sign’s first letter ʻiʼ might be associated with interactive or internet, due to its widespread use throughout the whole European Union in connection with many technical goods. Notwithstanding, for the contested goods it is neither descriptive nor allusive to any of its characteristics.

Furthermore, it cannot be excluded that at least a small part of the relevant public, especially when perceiving the element ʻiQTecʼ only aurally, might associate ʻiQʼ with the internationally recognized measurement of the human intelligence, namely ʻIQʼ meaning ʻintelligence quotientʼ. In this case and for this part of the public of the relevant territory, this element is distinctive as it does not describe or allude to the relevant goods.

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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the string of letters ‘QTEC’, which is non-distinctive for a part of the relevant public but fully distinctive for another part. However, they differ in their respective more attention catching and distinctive beginnings ‘Q21-’ of the earlier mark and ʻiʼ of the contested sign as well as the latter sign’s additional elements ʻfoam technologyʼ, which are distinctive for only a part of the relevant public as described above. Notwithstanding the non-distinctiveness of some of the different and additional elements, they do contribute to a visually different impression of the marks as a whole; two verbal elements connected by a hyphen versus three verbal elements distributed over two lines.

Therefore, the signs are either visually similar to a below average degree or similar to a low degree (for those for whom the coinciding element is non-distinctive).

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 ‛QTEC’, present identically in both signs but non-distinctive for a part of the relevant public. The pronunciation differs in the sound of the letters (and numbers) ‛Q21’ of the earlier sign as well as ʻiʼ and ʻfoam technologyʼ of the contested mark, which have no counterparts in the respective other sign. The differing initial parts ‛Q21’ and ʻiʼ are fully distinctive and lead already on its own (in case ʻfoam technologyʼ will not be pronounced due to its secondary position) to a considerably different length when pronounced.

Therefore, the signs are similar to a below average degree or similar to a low degree (for those for whom the coinciding element is non-distinctive). Based on the above, weighing up all the relevant factors and considering the overall impressions of the signs, the Opposition Division is of the view that the string of letters ´QTec´ (irrespective of the distinctiveness of the respective elements) cannot lead to more than a low degree of visual and aural similarity.

Conceptually, neither of the signs has a meaning as a whole. Although for a part of the public, e.g. the English-speaking one, the coinciding word ‘QTEC’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The contested sign’s non-distinctive verbal elements ʻfoam technologyʼ cannot influence the conceptual comparison as it cannot function as a badge of origin. The attention of this part of the relevant public will be attracted by the additional fanciful verbal elements, which have a meaning (‘21’or ‘i’) or not (ʻQ21ʼ as a whole) but are distinctive anyway. Since the signs contain the mentioned additional distinctive elements with the above described different meanings, they are conceptually dissimilar for this part of the public.

Similarly, for the part of the public that does not understand ‘QTEC’ or ʻfoam technologyʼ, the signs are also conceptually dissimilar as this part for the public will also perceive the different meanings of the elements ‘21’and ‘i’ of the conflicting 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 earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element (or several non-distinctive elements, depending on the public) in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating 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).

The additional and different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, even for the part of the public for whom the common elements are distinctive when bearing in mind that the degree of attention ranges from average to high.

For the mentioned part of the public the signs are visually and aurally similar to a below average degree and conceptually dissimilar. The signs as a whole give an aurally and visually different impression; two verbal elements connected by a hyphen versus three verbal elements distributed over two lines.

Moreover, the signs differ in their distinctive and more attention catching initial parts which are also the parts that contain the differing concepts that, taking into account the average to high attentiveness, is enough to securely distinguish the conflicting signs.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component, ‘QTEC’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65).

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘QTEC’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The opponent did not file any evidence regarding the use of a family of marks (apart from two screen shots of its website) but solely mentioned marks called ‘QTEC-80’, ‘QTEC-90’, ‘QTEC-95’, ‘QTEC-K’ and ‘QTEC-D’ are not sufficient to form a ‘family of marks’. Furthermore, just for the sake of completeness, to constitute a family of marks the coinciding element does not only have to be distinctive but it must also be placed in the same position in those marks forming such a family. The mark the opposition is based on has the element ‘QTEC’ in secondary position and the other marks mentioned by the opponent in initial position, which already on its own speaks against a family of marks.

Consequently, this argument of the opponent has to be set aside.

The opponent refers to previous decisions of the Office to support its arguments. 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘QTEC’ is non-distinctive. This is because, as a result of the non-distinctive character of that element, that part of the public will perceive the signs as being even less similar.

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, 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

Martin EBERL

Swetlana BRAUN

Lars HELBERT

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.