CANCELLATION No 42 365 C (INVALIDITY)

Microtec S.R.L., Via Po, 53, 30030 Mellaredo di Pianiga (VE), Italy (applicant), represented by Studio Bonini S.R.L., Corso Fogazzaro, 8, 36100 Vicenza, Italy (professional representative)

a g a i n s t

Plasticos Compuestos, S.A., Basters, 15, 08184 Palau Solità i Plegamans, Spain (EUTM proprietor), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative).

On 12/02/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 17 888 601 is declared invalid for some of the contested goods, namely:

Class 17: Plastics in extruded form for use in manufacture.

3. The European Union trade mark remains registered for all the remaining contested and non-contested goods, namely:

Class 2: Paints and washes; varnish; lacquers; anti-rust preparations; preparations for preventing the deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 17: Stuffing materials of plastics.

4. Each party bears its own costs.

REASONS

The applicant filed a request for a declaration of invalidity against European Union trade mark No 17 888 601 ‘BIOKOMP’ (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against some of the goods in Classes 2 and 17. The application is based on EUTM registration No 10 228 229 ‘BIO-COMP’ (earlier mark 1) and EUTM registration No 10 722 643 (earlier mark 2). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion since the goods were partly identical and partly similar to a high degree, and the signs were visually similar to a high degree and aurally identical. It also argued that, as a whole, the earlier marks’ expression ‘BIOCOMP’ had no meaning and was distinctive to an average degree since ‘COMP’ was neither an abbreviation with a univocal meaning nor commonly used in the plastic manufacturers sector. Furthermore, it claimed that the earlier marks had been extensively used and enjoyed an enhanced degree of distinctiveness in connection with bioplastics and resins in Classes 1 and 17. To support its observations, it submitted evidence of enhanced distinctiveness (listed and assessed below, together with the evidence of use of the earlier marks).

The EUTM proprietor requested the applicant submit evidence of use of its earlier trade marks. It also argued that there was no likelihood of confusion since the signs were different from all perspectives. It pointed out that ‘BIO’ was non-distinctive since it alluded to ‘biological’ and therefore described the quality of the goods and the elements. It further stated that ‘COMP’ and ‘KOMP’ were weak (allusive to ‘compound’ or ‘composition’). It mentioned that the earlier marks coexisted with other marks that included ‘BIOCOMP’, such as ‘BIOCOMPACT’ and ‘BIOCOMPOSTABLES’. It also considered that the figurative elements and the verbal element ‘Green Plastics’ of earlier mark 2 contributed to differentiating the signs. To support its observations, it quoted previous Office decisions. Regarding the goods, it argued that natural raw resins in Class 2 were different from unprocessed artificial resins in Class 1 since they had different properties and applications. Finally, the EUTM proprietor considered that the enhanced distinctiveness of the earlier marks was not proved and that their degree of distinctiveness was normal.

The applicant submitted evidence of use (listed and assessed below). It also argued that the previous decisions cited by the EUTM proprietor were not relevant since the conflicting signs had different semantic concepts, unlike in the present case. It reiterated its arguments about the similarity of the signs, arguing that the difference in one letter (‘C’ versus ‘K’) with the same sound, placed in the middle of the signs was not sufficient to differentiate them. Furthermore, it argued that earlier mark 2’s expression, ‘Green Plastics’, was visually secondary and descriptive, and its figurative elements were also non-distinctive (common symbols for recycling).

In its final observations, the EUTM proprietor argued that the evidence of use submitted by the applicant was insufficient. In particular, it argued that most of the evidence referred to the company Microtec S.R.L. and not to any particular trade mark, some documents were undated or dated before the relevant periods, most of the evidence came from the applicant, and the evidence referred to biodegradable resins, which were different to the contested goods. It then reiterated its arguments on the comparison of the signs and the lack of distinctiveness of the element ‘BIO’.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the earlier trade marks on which the application is based, namely EUTM registration No 10 228 229 for the word mark ‘BIO-COMP’ and EUTM registration No 10 722 643 for the figurative mark .

The request has been filed in due time and is admissible given that the earlier trade marks were registered respectively on 07/02/2012 and 01/11/2012, that is, more than five years prior to the date of the application for a declaration of invalidity (19/03/2020).

The application for a declaration of invalidity was filed on 19/03/2020. The date of filing of the contested mark is 17/04/2018. The applicant was, therefore, required to prove that the trade marks on which the application is based were genuinely used in the European Union from 19/03/2015 until 18/03/2020 inclusive. Since the earlier marks were registered more than five years prior to the date of filing of the contested mark, use of the earlier marks had to be shown also for the period from 17/04/2013 to 16/04/2018 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

EUTM No 10 228 229

Class 1: Unprocessed artificial resins, unprocessed plastics.

EUTM No 10 722 643

Class 17: Plastics in extruded form for use in manufacture.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 22/05/2020, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 27/07/2020 to submit evidence of use of the earlier trade marks.

On 27/07/2020, within the time limit, the applicant submitted evidence of use.

On 19/03/2020, together with the application for invalidity, the applicant also submitted some evidence related to the extensive use and enhanced distinctiveness of the earlier marks, which will be taken into account for the proof of use assessment of the earlier marks.

The evidence to be taken into account is therefore the following.

Evidence submitted on 19/03/2020

 Exhibit 1: definition of plastic and resin from McGraw-Hill Dictionary of Science and Engineering.

 Exhibit 2: declaration signed by the Managing Director of the applicant, Microtec S.r.l., dated 13/03/2020. It shows the annual turnover of BIOCOMP goods for 2013-2018 in Italy and the European Union (EUR 62 545 569 in Italy for the period 2013-2018 and EUR 5 660 598 in the rest of the European Union for the same period).

 Exhibit 3: invoices issued by the applicant and sent to clients in Italy and Poland, dated 2012, 2013 and 2019. They concern the sales of BIOCOMP ‘resina biodegradabile’ (biodegradable resins). The quantities are significant. The amounts have been redacted.

 Exhibit 4: screenshot from the ‘Mastercolour’ webarchive (www.mastercolour.es) dated 2013-2019, showing the sign .

 Exhibit 5: advertisements including the applicant’s sign in MACPLAS magazines and the related invoices issued by ‘Promaplast’ to the applicant, all dated during the relevant periods.

 Exhibit 6: advertisements, including the applicant’s sign depicted above, in Polimerica, dated 2017. One related invoice, dated 11/09/2017, issued by ‘Cronoart’ to the applicant.

 Exhibit 7: advertisements including the applicant’s sign depicted above in bioplasticsmagazine.com dated 2019 and 01/2020.

 Exhibit 8: advertisements, including the applicant’s sign depicted above, in plast magazines, dated 2016 and 2018. Invoices related to this issued by ‘DBIformation digital, business and publishing’ to the applicant during the relevant periods.

 Exhibit 9: screenshots from www.plastonline.org related to the ‘Plast 2012’ international exhibition for the plastic and rubber industries (Milan, Italy) from internet archive waybackmachine (dated 2012). This shows that the applicant had a stand and launched the trade mark ‘BioComp’ during this event. There are also invoices related to this event.

 Exhibit 10: bioplastics market data, dated 2018, in Italy from ‘plastic consult’.

Evidence submitted on 27/07/2020

 Exhibit 1: Microtec brochure, in Italian and English, showing, inter alia, goods (biodegradable plastic: particular material with almost identical physical and mechanical characteristics to normal polyolefinic plastic). It mentions that ‘BioComp is an innovative family of bioplastics made with vegetable and biodegradable polymer components obtained from raw materials of both renewable and fossil origin’.

 Exhibit 2: BioComp brochure, in Italian and English, showing the sign depicted above. It mentions that ‘BioComp comes in form of granules and can be processed according to the most common processing technologies in order to obtain fully biodegradable and compostable products, along with physical and mechanical properties comparable to those of traditional plastics’.

 Exhibit 3: BioComp technical sheet. It mentions that all ‘BioComp’ formulations are made from polymeric resins extracted both from biomass and from synthetic polymers made from bio-derived monomers and microorganisms. ‘BioComp’ resins are supplied in the form of granules in boxes of 750 kg.

 Exhibit 4: invoices dated 2012 related to the creation of the ‘BioComp’ logo, brochure and catalogue.

 Exhibit 5: documents related to certificates for awarding and use of the ‘OK COMPOST’ conformity mark for the trade mark ‘BioComp’ in form of resin or granulates for, inter alia, the periods October 2012-April 2017, March 2013-March 2018, April 2020-April 2021, April 2020-April 2022, May 2020-May 2022, September 2018-June 2022, May 2020-March 2022.

 Exhibit 6: screenshot from the ‘WHOis’ website concerning the domain name biocomp.it, created on 18/01/2012.

 Exhibit 7: same declaration as that submitted on 19/03/2020 as Exhibit 2.

 Exhibits 8: invoices issued by the applicant and sent to clients in Italy, Poland, Slovenia, France, India, Hungary, Turkey and Bosnia, dated 2012-2019. They concern the sales of BIOCOMP ‘resina biodegradabile’ (biodegradable resins in the form of granules). The amounts have been redacted but the quantities are significant.

 Exhibits 9-14: the same documents as those submitted on 19/03/2020 as Exhibits 4-9.

 Exhibit 15: pictures showing the figurative trade mark depicted on packaging, namely cardboard boxes containing ‘BioComp’ granulates.

 Exhibit 16: extracts from www.sciencedirect.com about synthetic resin mentioning that synthetic resin is the basic raw material of plastic and represents up to 30 %-60 % or more of its composition.

 Exhibit 17: extract about hydroxy acids.

Preliminary remarks responding to some of the EUTM proprietor’s arguments

The EUTM proprietor argues that most of the evidence comes from the sphere of the applicant (brochures, declaration, etc.) and that there is a lack of information from independent third parties.

As far as the declaration is concerned, Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

Assessment of genuine use — factors

Use in relation to the goods

The earlier marks are registered for the following goods:

EUTM No 10 228 229

Class 1: Unprocessed artificial resins, unprocessed plastics.

EUTM No 10 722 643

Class 17: Plastics in extruded form for use in manufacture.

According to Article 64(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

According to the Explanatory Note of the Nice Classification (10th Edition), in vigour at the filing date of the earlier mark (15/05/2012), plastics in extruded form for use in manufacture in Class 17 are in the form of sheets, blocks and rods. These goods refer to plastic material that has been made from the unprocessed plastics in Class 1 and will be made into finished plastic products. They are semi-processed goods.

The evidence only shows use for biodegradable resins, plastics which are unprocessed. As explained in the brochures submitted by the applicant, ‘BioComp’ bioplastics are made with vegetable and biodegradable polymer components obtained from raw materials of both renewable and fossil origin. They are made from polymeric resins extracted both from biomass and from synthetic polymers made from bio-derived monomers and microorganisms. They come in the form of granules and can be processed according to the most common processing technologies in order to obtain fully biodegradable and compostable products with physical and mechanical properties comparable to those of traditional plastics. Furthermore, as explained in detail by the applicant, and supported by technical dictionary definitions, unprocessed synthetic resins and unprocessed plastics are equivalent since both are made of polymers. Plastics (deriving from petrochemicals and/or from biological material) are synthetic resins made of large organic chains or polymers of high molecular mass which can be shaped and moulded under heat and pressure into a resin produced through chemical processes.

Therefore, the Cancellation Division considers that although there is some use demonstrated for the goods covered by earlier EUTM No 10 228 229 (namely unprocessed artificial resins, unprocessed plastics in Class 1), use has not been proved for plastics in extruded form for use in manufacture in Class 17 covered by earlier EUTM No 10 722 643.

Consequently, the application must be rejected pursuant to Article 64(2) EUTMR insofar as it is based on earlier EUTM No 10 722 643.

The examination of the evidence of use will continue only for unprocessed artificial resins, unprocessed plastics in Class 1 covered by EUTM No 10 228 229 ‘BIO-COMP’.

Time of use

The evidence must show genuine use of the earlier trade mark within the relevant periods.

Although some documents are undated or dated before or after the relevant periods, most of the invoices, advertisements and certificates are dated within the relevant periods.

Furthermore, although some packaging items are undated, images of products/product packaging (even if undated) may serve to show how the mark was used in relation to the relevant goods and to provide information regarding the type of goods the applicant manufactures and markets. Therefore, they cannot be ignored in the overall evaluation of the evidence (13/02/2015, T‑287/13, HUSKY, EU:T:2015:99, § 67-68).

In addition, use does not have to be continuous throughout the relevant periods of five years. It is sufficient if use was made at the very beginning or end of the period, provided the use was genuine (16/12/2008, T‑86/07, Deitech, EU:T:2008:577).

Therefore, it is considered that the evidence contains sufficient indications concerning the time of use.

Place of use

The documents show that the place of use is mainly Italy. The invoices also show sales in other countries, namely Poland, Slovenia, France and Hungary.

Furthermore, according to Article 18(1), second subparagraph, point (b) EUTMR, affixing the European Union trade mark to goods or the packaging thereof in the European Economic Area solely for export purposes also constitutes use within the meaning of paragraph 1.

Some invoices show that the goods were manufactured in Italy and sold in India, Turkey and Bosnia. This clearly shows that the goods were exported from the relevant territory.

Consequently, pursuant to Article 18(1), second subparagraph, point (b) EUTMR, the evidence of use sufficiently indicates the place of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The condition relating to genuine use of the mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39).

The items that support the extent of the use consist of an affidavit containing turnover figures for Italy and the European Union, together with several invoices sent to different clients in various Member States of the European Union, throughout the relevant periods. Furthermore, although the prices have been redacted (presumably for confidentiality reasons), the quantities of goods sold (biodegradable resins in kg) are sufficient to dispel token use. Moreover, the non-consecutive numbering of the invoices is likely to indicate that they are only samples of sales.

Consequently, the materials submitted show that the applicant has seriously tried to maintain or create a commercial position in the relevant market and there is sufficient information concerning the commercial volume, the duration, and the frequency of use.

Nature of use: use as a trade mark and use as registered

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Contrary to the EUTM proprietor’s arguments, the evidence not only refers to the applicant (the company name MICROTEC S.R.L.) but also shows that the earlier mark was depicted in the invoices, technical sheet, certificates, brochures, etc.

Therefore, the evidence shows that the earlier sign was used as a trade mark, to identify the commercial origin of the goods.

The registered sign is the word mark ‘BIO-COMP’.

The purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

Assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the trade mark (24/11/2005, T‑135/04, Online Bus, EU:T:2005:419, § 36).

The evidence shows use of the word mark ‘BIOCOMP’/‘BioComp’ on the invoices, certificates and technical sheet.

The mere omission of the hyphen between the components ‘Bio’ and ‘Comp’ is irrelevant. The use of upper- and lower-case letters makes a visual separation between these two components. Furthermore, since the earlier mark is a word mark, it is irrelevant whether it is written in upper case, lower case, or a combination thereof. The protection which results from the registration of a word mark relates to the word itself and not to the specific graphic or design elements which that mark might have (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43; 16/09/2013, T‑338/09, MBP, EU:T:2013:447, § 54; 03/12/2015, T‑105/14, iDrive / IDRIVE, EU:T:2015:924, § 59).

The figurative mark is also depicted in the brochures and advertisements. The verbal element ‘BioComp’ which is depicted separately from the remaining elements is the dominant verbal element of the sign. Although the sign is depicted in colour (different shades of green) with additional figurative and verbal elements, these additions do not alter the distinctive character of the earlier mark as registered. Indeed, the expression ‘Green Plastics’ is visually secondary and non-distinctive in relation to the goods (it refers to ecological/biodegradable plastics and resins). The figurative elements depicting some leaves and a circular arrow, commonly used to indicate recycling, are merely decorative elements. They are weak in relation to the goods because they allude to eco-friendly goods. Consequently, these additional elements do not alter the distinctive character of the earlier mark.

Consequently, the evidence does show use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

Conclusion

Taking into account the evidence in its entirety, the Cancellation Division finds that the abovementioned evidence proves that earlier EUTM No 10 228 229 has been genuinely used, as registered or as an acceptable variation, in the relevant territory and during the relevant periods for all the registered goods.

The examination of the application for invalidity continues in relation to earlier EUTM No 10 228 229.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 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 goods on which the application is based and for which use has been proved are the following:

Class 1: Unprocessed artificial resins, unprocessed plastics.

The contested goods are the following:

Class 2: Raw natural resins.

Class 17: Plastics in extruded form for use in manufacture.

As a preliminary remark, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 2

The contested goods in Class 2 are raw natural resins used primarily in the production of lacquers and varnishes. They are not similar to the applicant’s unprocessed artificial resins and plastics, which are artificial/chemical resins used primarily in making plastics. Contrary to the applicant’s arguments, although they are all resins, their natures, intended purposes and methods of use are different. Furthermore, they do not belong to the same market sector and their manufacturers and distribution channels are different. Finally, they are neither in competition nor complementary.

Contested goods in Class 17

The contested plastics in extruded form for use in manufacture are semi-processed goods, used in the manufacturing process to make other (plastic) goods and derived from unprocessed plastics. Therefore, they are similar to the applicant’s unprocessed plastics since all these goods are plastics found at different stages of the same manufacturing process. They have the same nature (plastics), are all produced by polymerisation or the chemical transformation of polymers, have the same purpose (used in the making of finished plastic products), coincide in their manufacturers and distribution channels, and are purchased by the same manufacturers. They can also be in competition (17/04/2008, T‑389/03, Pelican, EU:T: 2008:114, § 69-73).

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 business customers with specific professional knowledge or expertise (manufacturers of finished plastic products).

The degree of attention may vary from average to above average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

BIO-COMP	BIOKOMP
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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

‘COMP’ and ‘KOMP’ are meaningless in certain languages, such as French, Italian and Spanish. Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on the French-, Italian- and Spanish-speaking part of the relevant public.

The contested sign is the word mark ‘BIOKOMP’. Although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into components that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The public will perceive the commonly-used prefix ‘BIO’, which will be associated with the abbreviation of ‘biological’ and which serves to indicate that the products are organic, ecological and/or even biodegradable. Therefore, it is non-distinctive. The contested sign’s component ‘KOMP’ is meaningless and therefore distinctive to an average degree.

In the earlier mark, the prefix ‘BIO’ is linked to the component ‘COMP’ by a hyphen. The abovementioned considerations concerning the meaning and distinctiveness of the contested sign’s prefix ‘BIO’ apply equally to the earlier mark. ‘COMP’ is meaningless. As argued by the applicant, in the market sector concerned (manufacture of plastics), this element is not commonly used and although it may be perceived by part of the public as allusive to ‘compound’, ‘composition’ or ‘composite’, it has no direct and clear meaning in relation to the goods. Therefore, it is distinctive to an average degree.

Visually, the signs coincide in the letters ‘B-I-O-*-O-M-P’ placed in the same order and position. The signs are the same length and have the same beginning and the same ending. They only differ in the letter ‘C’/‘K’ of the earlier mark and contested sign respectively, placed in the middle of the signs where they are likely to go unnoticed, and in the earlier mark’s hyphen. Therefore, the signs are visually similar to an above-average degree.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions regarding the semantic content of the signs. Neither of the signs has a meaning as a whole. Although the coinciding element ‘BIO’ evokes a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of the goods. The remaining components of the signs, ‘COMP’ and ‘KOMP’, are meaningless. 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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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 in the mark as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are partly similar and partly dissimilar. The relevant public’s degree of attention varies from average to above average.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The signs are visually similar to an above-average degree and aurally identical. Despite the non-distinctive character of the coinciding component ‘BIO’, the Cancellation Division considers that the differences between the signs – lying in one letter and a punctuation mark (hyphen), which have no phonetic impact – are insufficient to distinguish between the signs.

The EUTM proprietor refers to previous Office decisions 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 Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office 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 EUTM proprietor are not relevant to the present proceedings since the signs are either not comparable (12/05/2016, B 2 420 332) or conceptually not similar, since at least one of the distinctive components of the signs had a clear meaning for the relevant public, unlike the case at hand (27/09/2019, B 3 068 427; 31/08/2015, R 2438/2014‑5, FILIBOX / FILMBOX).

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 Cancellation Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the French-, Italian-and Spanish-speaking part of the public, even when displaying an above-average degree of attention. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration No 10 228 229. It follows that the contested trade mark must be declared invalid for the goods found to be 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) EUTMR, the application based on this Article and directed against these goods cannot be successful.

Since the cancellation application is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its extensive use as claimed by the applicant even for similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the earlier mark for dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation 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 Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part 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 Cancellation Division

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

Richard BIANCHI

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.