OPPOSITION No B 3 070 232

Quide S.A., Poligono Industrial Itziar, 20820 Deba (Gipuzcoa), Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Saint-Gobain Ceramics & Plastics Inc., One New Bond Street. 01615-0008 Worcester, United States of America (applicant), represented by Novagraaf France, Bâtiment O2 – 2 rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur -Seine, France (professional representative).

On 22/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 232 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 895 711 for the word mark ‘ROKIDE’. The opposition is based on European Union trade mark registration No 4 916 681 for the figurative mark and European Union trade mark registration No 17 047 507 for the word mark ‘QUIDE’. The opponent invoked Article 8(1)(a) and (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 European Union trade mark registration No 4 916 681 for the figurative mark , one of the earlier rights, on which the opposition is based.

The request was filed in due time and is admissible given that this earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 19/09/2019 the opponent was given two months to file the requested proof of use. The deadline for submitting proof of use expired on 29/11/2019.

The opponent did not submit any evidence concerning the use of this earlier trade mark, on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition. Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR, insofar as this earlier right is concerned.

The opposition will continue on the basis of the remaining earlier right not subject to proof of use requirements, namely European Union trade mark registration No 17 047 507 for the word mark ‘QUIDE’.

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.

1. The goods

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

Class 1: Fire retardant additives for resins; Fire retardant additives for plastics; Fire protection compositions; Fire protection compositions; Fire extinguishing compositions; Fireproofing preparations; Firefighting foam; Stabilizers for flame retardants; Fireproofing preparations; Fireproofing preparations; Chemical preparations for use in the prevention of fires; Chemical preparations for use in providing fire resisting properties; Chemical preparations for use in providing fire retarding properties; Fireproofing preparations; Flame proofing chemicals; Chemicals for use in the manufacture of flame retardant compositions; Chemicals for use in the manufacture of flame retardant coatings; Fire absorbent chemicals for the manufacture of fire resistant coatings; Fire absorbent chemicals for use in the manufacture of fire retardant paints; Fire absorbent chemicals for the manufacture of fire retardant polymers; Fire absorbent chemicals for the manufacture of fire retardant plastics; Fire absorbent chemicals for the manufacture of fire retardant plastics; Flame proofing chemicals; Fire retardant chemicals; Flame retardants; Flame proofing solutions; Catalysts for chemical and biochemical processes; Catalysts for oxidation processes; Polymers for use in the analysis of organic chemicals; Polymers for use as reference standards in science; Polymers for use in the analysis of biochemicals; Chemicals used in science; Damp proofing compositions [other than paints]; Anti-damp insulating compositions [other than paint]; Foundry sand; Chemical compositions for reinforcing brickwork; Chemical compositions for use in the construction industry; Water repellant compositions; Chemical fixing compounds; Compositions for dust proofing concrete; Chemical compounds for use in welding; Preservatives for the surfaces of buildings [chemical] other than paints or oils; Preservatives for buildings [except paints and oils]; Masonry preservatives, except paints and oils; Brickwork and masonry preservatives (not paints and oils); Preservatives for tiles, except paints and oils; Damp-proofing chemicals, except paints, for masonry; Impregnants for exterior surfaces of buildings [other than paints or oils]; Waterproofing membranes in liquid chemical form for use in construction; Preservatives for tiles, except paints and oils; Masonry preservatives, except paints and oils; Damp-proofing chemicals, except paints, for masonry; Water repellant compositions; Retarders for use with plaster; Retarders for use with mortar; Protective coatings for walkways [other than paints or oils]; Protective coatings for balconies [other than in the nature of paints or oils]; Protective coatings for car park decks [other than in the nature of paints or oils]; Protective coatings in the form of sprays for use on concrete [other than paints or oils]; Protective coatings for buildings [other than paints or oils]; Protective coatings for waterproofing surfaces of buildings [other than paints or oils]; Surfactants for use in coating concrete [other than paints]; Chemical sealing grout for use in the construction industry; Cement (Oil -) [putty]; Pastes containing metal-filed glass for use in industry; Pastes containing glass for use in industry; Polyesters for use in the repair of flaws in surfaces; Polyesters for use in the repair of holes in surfaces; Polyesters for use in the filling of holes in surfaces; Reinforcing fillers; Fillers for cardboard; Oils for use in the manufacture of printing inks; Activated carbon; Defoaming agents; Mould releasing agents having a water and solvent base; Detergents for cleaning use [part of manufacturing operations]; Descalants for industrial use; Degreasing agents [not for household use]; Oil (Synthetic materials for absorbing -); Oils for foundry purposes prepared from linseed oil; Synthetic resin adhesives for laminating purposes; Synthetic resin adhesives for industrial purposes; Synthetic binders for agglomeration; Synthetic linear alcohols for industrial use; Synthetic linear alpha olefins; Drilling muds; Resists of light sensitive resins; Catalysts for synthetic resins; Synthetic catalysts; Cyclopentane; Reactive liquid polymer compositions; Synthetic resin compositions [unprocessed] for industrial purposes; Synthetic compositions for forming coatings of borosilicate glass; Chemical compounds for the manufacture of artificial resins; Chemical compounds for the manufacture of artificial resins; Rubber preservatives; Solid and liquid diluents for artificial resins; Emulsifiers for resins; Epoxy resins, unprocessed; Synthetic thickeners for use in manufacture; Syntactic foams made from synthetic resins; Phenolic resins; Flexibilizers for artificial resins; Synthetic neutralising tanning materials; Oil (Synthetic materials for absorbing -); Synthetic resin plastics [unprocessed]; Precursors of artificial resins; Rubber preservatives; Synthetic resin fillers; Unprocessed acrylic resins; Synthetic resins, unprocessed; Conductive resins; Ultraviolet curable resins; Polyvinyl acetate resins; Polyvinyl chloride resins; Polyvinylidene chloride resins; Unprocessed artificial resins as raw materials in the form of powders, liquids or pastes; Polyurethane resins; Unprocessed resins; Epoxy resins, unprocessed; Epoxy resins; Fluorinated resins; Polymer resins, unprocessed; Raw synthetic resins in the form of liquids; Radiation curable unprocessed synthetic resins; Raw synthetic resins in the form of paste; Synthetic resins, unprocessed; Synthetic resins in the form of solvents for use as coatings; Expanded synthetic resins [unprocessed]; Mouldable synthetic resins [unprocessed]; Unprocessed synthetic resins for use in the manufacture of molding compounds; Synthetic silica; Synthetic resins for binding floor coatings; Synthetic resins for use in glass fibre reinforced laminates; Synthetic resins for use in the treatment of surfaces of buildings; Synthetic resins for use in adhesives; Synthetic resins for use in glass fibre reinforced mouldings; Thermally curable unprocessed synthetic resins; Slip agents; Dispersing agents; Polyvinyl alcohol; Rubber compounds for industrial use; Compounds of polyvinyl chloride; Thermoplastic compounds; Copolymers; Dispersing agents; Liquid elastomers; Thermoplastic elastomers; Acrylic latexes (Raw -); Thermosetting plastic refractory materials; Plastics in the form of dispersions; Unprocessed plastics in all forms; Unprocessed plastics of natural origin; Unprocessed plastic materials in powder, liquid or paste form; Plastics in the form of powders; Plastics in the form of liquids; Unprocessed artificial plastics; Unprocessed cellulose acetate plastics; Plastic in the form of powders [for use in industry]; Plastics in the form of chips; Plasticizers; Plastisols; Polyesters (unprocessed); Polystyrene [unprocessed]; Polyethylene; Unprocessed synthetic polymers; Polyurethanes; Unprocessed polyurethane; Raw chemicals for use in the manufacture of polyurethane resins; Chemicals for use in the manufacture of polyurethanes; Acrylic resins; Acrylic substances (Unprocessed -); Pure silicon; Polyurethane coatings [other than paints]; Thermoplastic resins [unprocessed]; Co-polyester resins; Unprocessed polyamide resins; Polyethylene resins [unprocessed]; Metal tempering preparations; Soldering preparations; Mixed acids; Adhesive melts; Rubber based adhesives [other than for household or stationery use]; Water based adhesives [other than for household or stationery use]; Commercial adhesives [other than for stationery or household use]; Rubber adhesives for industrial use; Rubber adhesives [other than for household or stationery use]; Epoxide adhesives for use with concrete; Metal to metal adhesives [other than for stationery or household use]; Plastic adhesives [not for stationery or household purposes]; Polyurethane adhesives; Surface adhesives [not for medical, stationery or household use]; Hot applied roofing adhesives; Quick bonding adhesives for industrial use; Structural adhesives for building use; Industrial adhesives for use in building; Industrial adhesives for use in coating and sealing; Adhesives for glazing; Adhesives for wall tiles; Adhesives for wall tiles; Adhesives for wall tiles; Adhesives for billposting; Adhesives for wall tiles; Adhesives for affixing insulating boards; Adhesives for securing plaster; Adhesives for applying wall coverings; Adhesives for waterproofing; Adhesives for the building industry; Woodworking adhesives for industrial use; Adhesives for mortar; Adhesives for paperhanging; Adhesives for paperhanging; Adhesives for paving; Adhesives for cement manufactured products; Adhesives for floor coverings; Adhesives for floor coverings; Adhesives for floor coverings; Adhesives for ceramic coating; Adhesives for ceiling coverings; Adhesives for the building industry; Adhesives for use in the manufacture of furniture; Adhesives for use in the manufacture of plywood; Adhesives for use in the manufacture of wall coverings; Roofing adhesive; Adhesives for floor, ceiling and wall tiles; Adhesives for glazing; Thermofusible adhesives [other than for stationery or household purposes]; Latex rubber additives; Bonding agents for masonry; Bonding agents for admixture with grouts; Agglutinants for wood; Adhesive cements; Contact cement for use with wood; Waterproofing chemicals (Cement- -), except paints; Rubber based cements [adhesives] for industrial use; Pressure sensitive adhesive tapes [sensitised]; Epoxy glue for general bonding and repair purposes; Latex glue [not for stationery or household purposes]; Adhesives for paperhanging; Glue for industrial purposes; Adhesive compounds with a base of epoxy resins; Gelatin beads for industrial use; Adhesive stiffeners for plastics; Gums [adhesives] for industrial purposes; Gums [adhesives] for industrial purposes; Mastics for use in bonding; Adhesives for the building industry; Mixtures of resin and filler for use as an adhesive [other than for stationery or household use]; Paper paste [adhesive] other than for stationery or household purposes; Adhesives for paperhanging; Adhesives for the building industry; Cement for mending broken articles; Chemicals for use in sticking [other than for household or stationery purposes]; Chemicals for use in making adhesive substances; Waterproofing chemicals (Cement- -), except paints; Chemicals for use in gluing [for industrial purposes]; Bond-promoters; Adhesive fillers for filling surface blemishes; Adherent substances for adhesive tapes; Adhesives for the building industry.

Class 2: Paints and washes; Polymer colours; Liquid colours; Fireproof paints; Acrylic paints; Bactericidal paints; Lacquers [paints]; Anti-static paints; Acrylic paints; Paints for protection against corrosion; Metallic paints; Varnish paints; Damp proofing paints; Bactericidal paints; Waterproof paints; Fireproof paints; Paints for protection against corrosion; Anti-fouling paints; Paint blocks; Powdered paints; Solvent free paint; Floor paints; Paint preparations; Paint sealers; Distempers; Powdered paints; Thinners for colours; Rubber paints; Waterproof coatings [paints]; Siccatives for colours; Pigments for use in paints; Oil paints; Spray-on paints; Spray-on paints; Water sealant preparations [paints]; Oil paints; Lime wash paint; Lime wash paint; Water based acrylic paints; Wood coatings [paints]; Synthetic resin paints; Lacquers in the nature of paints; Preparations for drying paints; Coating compositions in the nature of paint; Transparent coating materials [paints]; Paints for use in preventing mould; Synthetic resin primers [paints]; Transparent finishes in the nature of paint; Industrial coatings in the nature of paint; Paint drying compositions; Protective surface coatings [paints]; Undercoats [paints] for use on wood; Undercoating for surfaces to be painted; Paint for use in the manufacture of furniture; Surface treatment materials in the nature of paints; Varnish; Enamels [varnishes]; Fixatives [varnishes]; Floor protection varnishes; Varnish for the protection of wood; Lacquering sprays; Mould lacquers; Wood lacquers; Spray coatings [varnishes]; Lacquers for use in industry; Lacquers; Thickeners for lacquers; Binders for varnishes; Thinners for lacquers; Dyewood; Annatto [dyestuff]; Watercolors (Fixatives for -); Paint additives in the nature of tinting colours; Fluorescent brightening agents [dyes]; Alizarine dyes; Dioxide (Titanium -) [pigment]; Indigo [colorant]; Saffron [colorant]; Auramine; Prussian blue; Ultramarine blue as pigment; Sumac for varnishes; Vermilion; Annatto [dyestuff]; Titanium white; Whites [colorants or paints]; Cochineal carmine; Cobalt oxide [colorant]; Colophony; Colophony; Dyestuffs; Direct dyes; Dyestuffs for use in industry; Wood dyes; Colorants for imparting permanent colour; Aniline dyes; Colorants for fibrous materials; Colorants for cellulosic materials; Colorants for ceramic paints; Colorants for application to wood; Dyestuffs for use in industry; Colorants for use in formulating paints; Colorants for use in the manufacture of paint; Oil soluble dyes; Synthetic resin colors; Turmeric [colorant]; Dammar; Colour formers; Siccatives [drying agents] for paints; Siccatives for use as drying agents for inks; Siccatives for use as drying agents for coatings; Dioxide (Titanium -) [pigment]; Aqueous pigment dispersions for the mass coloration of materials; Emulsions (Silver -) [pigments]; Logwood extract [dyes]; Dyewood extracts; Watercolors (Fixatives for -); Fixatives for dyestuffs; Fixatives for dyestuffs; Water repellent fungicidal wood stains; Yellowwood [colorant]; Oxide (Zinc -) [pigment]; Soot [colorant]; Printing lakes; Dyewood; Dyewood extracts; Dyewood; Wood mordants; Wood dyes; Colouring matter for use in paints; Colouring matter for use on enamel; Colouring matter for use in plastics; Colorants; Wood dyes; Processed minerals for use as additives to paints; Red lead; Carbon black [pigment]; Lamp black [pigment]; Blacks [colorants or paints]; Cobalt oxide [colorant]; Orange lead; Oxide (Zinc -) [pigment]; Barium sulphate pigment for paints; Synthetic plastics material pigment in granular form; Pigments for use in paints; Pigments; Pigments for use in paints; Pigments having bronzing properties; Printing pigments; Electrically conductive pigments for use in the manufacture of lacquers; Pigments in liquid form; Pigments in powder form; Photochromic pigments; Flame resistant pigments; Inorganic pigments; Organic pigments; Luminescent pigments; Pigments for protective coatings; Pigments for use in the preparation of inks; Pigments for use in paints; Flame resistant pigments; Coloured paints for facades; Liquid colours; Polymer colours; Emulsions (Silver -) [pigments]; Red lead; Coloured metallic powders; Staining [colouring] preparations; Colouring preparations for staining paints; Colouring products for addition to polymeric material; Preparations for use in the mass coloration of materials; Ageing products for cabinet-making dye; Quebracho for dyeing; Resins for use in pigmentation; Pigment siccatives; Colouring substances; Colouring matter for plastics; Orange lead; Sienna earth; Metallic inks; Dry inks; Glue dye; Dyes; Acid dyes; Basic dyes [cationic dyes]; Wood dyes; Tinters for paints; Natural dyes; Alcohol soluble dyes; Solvent dyes for wood; Dyes for use on plastics; Rapid dyes; Synthetic dyes; Thinners for varnishes; Thinners for dyestuffs; Thinners for colours; Thinning preparations for paints and for coatings; Thinners for inks; Bonding agents for lacquers; Binding agents for paints; Stabilising agents for use in paints; Binders for varnishes; Agglutinants for paints and for putty; Thickeners for colours; Paint thickeners; Solvents for thinning paints; Synthetic thickeners for paints; Sealant primers; Thinners for colours; Turpentine [white spirit] for use as a thinner in paints; Turpentine [white spirit] for use as a thinner in varnishes; Gum turpentine; Turpentine [thinner for paints]; Thinners for colours; Coatings for preserving against rust; Anti-rust greases; Rust resisting substances; Anti-rust oils; Anti-rust oils; Coating preparations for protection against rust; Preparations for preserving metal against rust; Preparations for preventing the deterioration of wood; Preparations for preventing the deterioration of wood; Varnish for the protection of wood from deterioration; Preservatives against the deterioration of masonry; Preservatives against the deterioration of zinc; Elasticated paints for protecting metals against deterioration; Mordants; Mordants; Wood mordants; Mordants for use in industry; Mordants [fixatives] in the nature of varnishes; Weather sealing stains; Pine gum [raw natural resin]; Copal; Shellac; Gum resins; Shellac; Mastic [natural resin]; Gum resins; Raw natural resins for use in the manufacture of varnishes; Natural resins for use in the manufacture of adhesives; Permanently coloured natural resins; Raw natural resins for use in the manufacture of varnishes; Resins for coating purposes; Resinous coatings; Resinous coatings; Sandarac; Aluminium powder for painting; Gilding creams; Foils of lead alloys for painters, decorators, printers and artists; Foils of metal for use in printing; Foils of metal for use by decorators; Foils of metal for use by painters; Metal foil for use in painting, decorating, printing and art; Gold foil; Foils of lead for painters, decorators, printers and artists; Gilding liquids; Metal in foil form for use in printing; Foils of metal for use by artists; Metals in leaf form for painters, decorators, and artists; Metal in foil form for use in printing; Metal foil for use in painting, decorating, printing and art; Metal foil for painters, decorators, printers and artists; Non-ferrous metals in powder form for painters, decorators, printers and artists; Metals in powder form for use in painting, decorating, printing and art; Non-ferrous metals in foil form for painters, decorators, printers and artists; Precious metal foil for painters, decorators, printers and artists; Bronze powder for painting; Powders of lead's alloys for painters, decorators, printers and artists; Metals in powder form for painters, decorators, printers and artists; Powders of precious metals for use by painters, decorators, printers and artists; Metal powders for painters, decorators, and artists; Silvering powders; Gilding products for wood.

The contested goods are the following:

Class 2: Coatings; wear resistant surface coatings; wear resistant surface coatings made of ceramic materials; wear resistant surface coatings made from metallic materials; wear resistant surface coatings made from non-metallic materials; Ceramic rods for use in high temperature flame spraying coating processes; metallic rods for use in high temperature flame spraying coating processes.

Class 7: Machines and machine tools, namely equipment for surface coating and insulation purposes; power-operated spray equipment for applying coatings; power-operated spray equipment for applying wear-resistant surface coatings; parts and fittings for the aforementioned goods.

Some of the contested goods are identical or similar to goods on which the opposition is based (for example the contested coatings include, as the broader category, the opponent’s protective surface coatings [paints] and therefore these goods are identical). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods 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.

2. 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 majority of the goods assumed to be identical are directed at the specialised public, painters and technicians, however, some might be purchased also by the general public (for example coatings).

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.

3. The signs

QUIDE	ROKIDE
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).

When an opposition is based on a European Union trade mark, as in the present case, in conducting the aural and conceptual comparisons account must be taken, in principle, of all the different pronunciations and meanings of the signs by the relevant public in all the official languages of the Member States.

The earlier mark and the contested sign are both word marks, ‘QUIDE’ and ‘ROKIDE’ respectively. As such they have no elements that could be considered dominant (visually eye-catching).

In the present case, both signs are meaningless for the entire relevant public and therefore distinctive to a normal degree.

The applicant claims that the earlier mark may be associated with some meanings by the French- and English-speaking public, on the account of the letters ‘QUID’.

Although it is true that consumers could dissect verbal elements 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), in the present case, bearing in mind the goods in question, the Opposition Division considers that it is improbable that the relevant public would dissect the signs in such manner given the unspecific nature of the suggested meanings and/or lack of any relation to the relevant goods.

First and foremost it must be taken into account that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Therefore, in the present case, in the absence of any hyphen, capitalization or any other visual cue that would help consumers dissect the sign, the Opposition Division assumes that the earlier mark will be perceived as a meaningless entity: ‘QUIDE’.

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.

The visual perception of the signs in question is the same for the entire relevant public, however, the pronunciation of the elements ‘QUIDE’ and ‘ROKIDE’ varies significantly, depending on the language concerned.

Part of the public, such as the Polish- or Hungarian-speaking public, is not familiar with the letter ‘Q’, as it does not form part of their alphabets and appears only in words borrowed from other languages. This part of the public will pronounce the earlier mark as /kwiː - dɛ/ (Polish) and /kuːi - dɛ/ (Hungarian) and the contested sign as /rɔ-ki-dɛ/ such that the pronunciation of the signs are, therefore, clearly different.

The German speaking public will pronounce the earlier sign as /kvi-d​e/ and the contested sign as /ʀoː-ki-de/. The Italian speaking public will pronounce the signs as /kwiː-dɛ/ and /rɔ-ki-dɛ/.

On the other hand, part of the relevant public, such as the Spanish- or French-speaking public, will pronounce the earlier mark, ‘QUIDE’, and the letters ‘KIDE’ of the contested sign identically. Additionally, the Spanish-speaking part of the public, (unlike the French) will pronounce the last letter ‘E’ in both signs, creating an additional identical syllable in both of them. Therefore, pronunciation of the signs is the most similar for the Spanish-speaking part of the public.

Consequently, for the purposes of this comparison the Opposition Division will assess the signs from the perspective of the Spanish-speaking public, as this is the most advantageous scenario for the opponent.

Visually, the signs coincide in the last three letters of their verbal elements, ‘IDE’. They differ in the initial letters of these elements, ‘QU***’ in the earlier mark versus ‘ROK***’ in the contested sign. As mentioned above the first part is generally the one that primarily catches the consumer’s attention and, therefore, the fact that the signs differ in their beginnings part has an impact in the comparison. Moreover, the signs differ in their lengths, as the earlier mark is relatively short, being composed of five letters, whereas the contested sign comprises seven letters.

Since the alphabet is made up of a limited number of letters, which are not all used with the same frequency, it is inevitable that many words will have some of their letters in common, but they cannot, for that reason alone, be regarded as visually similar.

What matters in the assessment of the visual similarity of two word marks is, rather, the presence, in each of them, of several letters in the same order (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 83).

The commonality in three final letters, which are not immediately apparent in the signs, will lead at most to the minimal visual similarity.

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

Aurally, for the analysed Spanish-speaking public the pronunciation of the signs coincides in the sound of the letters ‘QUIDE/KIDE’, pronounced as two syllables, /ki-de/, and differs in the sound of the initial, additional syllable of the contested sign /RO/.

Although the pronunciation of the signs coincides in two syllables constituting the entire earlier mark, the initial syllable /RO/ of the contested sign is still very prominent so that the signs are considered aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the analysed public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

The goods have been assumed by the Opposition Division to be identical. The marks are visually similar to a very low degree and the conceptual aspect does not influence the assessment of their similarity, for the entire relevant public. Aurally, the degree of similarity is the highest for the Spanish-speaking public and is considered to be average. The degree of attention of the relevant public varies from average to high. The distinctiveness of the earlier mark is average, which affords it a normal scope of protection under Article 8(1)(b) EUTMR.

It must be taken into account that it is extremely improbable that the relevant marks would be encountered only aurally. On the contrary, the goods in question are purchased following a thorough examination of their functionalities, technical specifications, colours etc. Therefore, it must be assumed that, they will be subject, before their purchase, to a visual inspection on the part of the consumer, even if they are initially referred to orally.

Consequently, the Opposition Division is of the opinion that, taking into account that visually the earlier mark differs significantly in its beginning and its length from the contested sign, the average degree of aural similarity between the signs does not outweigh the differences, so that there is no likelihood of confusion for the Spanish-speaking public, even assuming that the goods are identical.

This is true a fortiori for the remaining parts of the public, for which the signs are aurally less similar.

The opponent refers to previous decisions of the Office in oppositions B 2 467 689, B 2 778 879 and B 2 945 577 to support its arguments of likelihood of confusion. 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 opponent are not relevant to the present proceedings, because they all concern situations in which one of the signs was entirely included in the other (also visually), unlike in the present case, where the earlier mark ‘QUIDE’ overlaps with the contested sign ‘ROKIDE’ only in its last three letters. In the present case the abovementioned visual differences are particularly noticeable also given that the coinciding letters are parts of larger verbal elements and will not be perceived as separate elements.

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

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Angela DI BLASIO

Anna ZIOLKOWSKA

Kieran HENEGHAN

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.