OPPOSITION No B 3 070 138

CIN - Corporação Industrial do Norte, S.A., Avenida Dom Mendo, 831, 4474-009 Maia, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques and Pedro Gil da Silva Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 - 6°. Dt°., 4000-432 Porto, Portugal (professional representatives)

a g a i n s t

Helios TBLUS d.o.o., Količevo 65, 1230 Domžale, Slovenia (applicant), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative)

On 12/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 138 is partially upheld, namely for the following contested goods:

Class 2: All the contested goods in this class.

Class 17: Insulating articles, insulating paints, insulating varnish.

2. European Union trade mark application No 17 921 405 is rejected for the goods as reflected under point 1 of this dictum. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 921 405 for the 3D shape mark . The opposition is based on Portuguese trade mark registration No 517 334 for the word mark 'COLORMIX'. 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 2: Paints, varnishes, enamels, lacquers and siccatives.

Class 40: Treatment of materials for third parties; manufacture of ready-to-use paints from their basic components; paint mixing services; paint mixing consultancy; consultancy with regard to the mixing of paints and the manufacture of ready-to-use paints.

Following a limitation filed by the applicant on 02/07/2019, the contested goods are the following:

Class 1: Chemicals used in industry, in particular colorants and chemical preparations for the manufacture of paints, industrial chemicals, aldehydes, antistatic preparations, other than for household purposes, bacteriological preparations, other than for medical and veterinary use, biological preparations, other than for medical or veterinary purposes; Chemicals used in industry, in particular chemical preparations, other than for medical or veterinary use, concrete preservatives, except paints and oils, condensation-preventing preparations, degreasers for use in manufacture, decolorants for industrial purposes, emulsifiers; Chemicals used in industry, in particular fireproofing preparations, preservatives for use in construction, except paints and oils, vitreous enamel-removing preparations, ceramic preservatives, except paints and oils, and salts for colouring metal; Synthetic resins (unprocessed); Plastics [unprocessed]; Tanning substances; Adhesives used in industry; Currying preparations for leather; all aforementioned goods to be used in vehicle manufacturing, repair, refinish; all aforementioned goods not for or in connection to joint or cable sealants; all aforementioned goods not for or in connection to painting materials, namely pre-painting materials for joint sealings.

Class 2: Paints, including wood stains, bactericidal paints, fire-resistant paints, ceramic paints, aluminium paints, printing ink and printers' pastes, coatings (paints), coatings, bleach, colorants, pigments and binding preparations for paints; Varnishes and hardening agents for varnishes; Lacquers, including lacquers based on varnishes and lacquers for staining; Preservatives against rust, in particular anti-corrosive preparations, preservatives for metals, minium, red lead and orange lead, primer and protective coatings for automobile bodies; Primers; Thinners for paints and for lacquers; Thickening agents; Drying preparations; Mordants; Polishes (glazes); Water-based paint hardening agents; Preservatives against deterioration of wood, including wood coatings (paints) and wood mordants; Metals in foil and powder form for painters, decorators, printers and artists; all aforementioned goods to be used in vehicle manufacturing, repair, refinish; all aforementioned goods not for or in connection to joint or cable sealants; all aforementioned goods not for or in connection to painting materials, namely pre-painting materials for joint sealings.

Class 17: Artificial resins (semi-finished products), acrylic resins (semi-finished products); Raw or semi-worked gum, gaskets and rings of rubber; Semi-processed plastics, namely semi-finished products made of artificial resins and semi-finished products for insulating paints and insulating articles; Plastic fibres, not for use in textiles; Adhesive and self-adhesive tapes (other than for household purposes or for medical purposes); Insulating articles, insulating oil, insulating paints, insulating varnish, insulating bands, substances for insulating buildings against moisture; Filtering materials (semi-processed foams or films of plastic); Flexible pipes, not of metal; Lute; all aforementioned goods to be used in vehicle manufacturing, repair, refinish; all aforementioned goods not for or in connection to joint or cable sealants, all aforementioned goods not for or in connection to painting materials, namely pre-painting materials for joint sealings.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

It should also be noted that all the contested goods in Classes 1, 2 and 17 are limited, at the end of the respective specifications, with the wording all aforementioned goods to be used in vehicle manufacturing, repair, refinish; all aforementioned goods not for or in connection to joint or cable sealants; all aforementioned goods not for or in connection to painting materials, namely pre-painting materials for joint sealings. However, since the opponent’s goods and services in Classes 2 and 40 do not exclude goods and services to be used in vehicle manufacturing, repair or refinish nor are specifically related to joint or cable sealants or only painting materials, namely pre-painting materials for joint sealings, the limitations at the end of the specifications of the contested goods in Classes 1, 2 and 17 do not affect the outcome of the identity or similarity between the contested goods and the opponent’s goods and services, if any. Therefore, while the above-mentioned limitations will be taken into account, they will not be mentioned in the comparisons that follow.

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.

Contested goods in Class 1

The contested goods in this class effectively consist of chemicals used in industry (for different purposes), unprocessed synthetic resins, tanning substances, currying preparations for leather as well as adhesives used in industry which consist of chemical substances and organic compounds used for industrial purposes.

Even if some of the contested goods may be used for the manufacture of some of the opponent’s goods in Class 2 (such as paints), they are not similar. The contested goods in Class 1 have a different nature, purpose and method of use than the opponent’s goods in Class 2 which consist of finished products essentially being paints, lacquers and varnishes. Furthermore, they do not target the same relevant public or share the same distribution channels; they are not in competition and are not complementary to each other since the contested goods in Class 1 are not essential or important for the use of the opponent’s goods in Class 2 or vice versa. Moreover, the goods under comparison are not usually produced by the same undertakings.

As regards the opponent’s services in Class 40, the general term treatment of materials is one of the general indications from the Nice Class Headings that are considered to lack the necessary clarity and precision. In this respect, these were identified by the Office in conjunction with the national offices of the European Union (see European Trade Mark and Design Network, Common Communication on the Common Practice on the General Indications of the Nice Class Headings v1.1, 20/02/2014). The general term treatment of materials does not give a clear indication of the services being provided.

Therefore, the opponent’s claim that the services covered by the earlier mark in Class 40 inseparably and inevitably relate to the goods designated by the contested application (in Class 1) cannot be accepted. Unclear and imprecise terms can only be taken into account in their most natural and literal sense but cannot be construed as constituting a claim to goods or services that cannot be covered by this meaning without further specification. As a result, while the abstract meaning of the term treatment of materials can be understood, the nature of the treatment is unclear, as are the materials to be treated. These services cover a wide range of activities performed by different service providers on materials of different characteristics, requiring very different levels of technical capabilities and know-how, and may relate to different market sectors. It follows that the opponent’s treatment of materials cannot be construed as relating to or involving the contested goods in Class 1 when such circumstances cannot be understood from its natural and literal meaning. Furthermore, while the opponent’s services are intangible, the contested goods in Class 1 are tangible and their nature is therefore different. Moreover, for the reasons set out above, on the basis of the insufficient information and facts provided by the imprecise specification of the earlier mark, the goods and services under comparison cannot be considered to have the same purpose or to be complementary to each other; they cannot be considered to target the same relevant public, share the same distribution channels or be usually produced and provided by the same undertakings. Consequently, in the absence of a further specification (by way of a partial surrender) of the unclear and imprecise term treatment of materials, these services cannot be considered to be similar to the contested goods in Class 1.

The other services covered by the earlier mark in Class 40 essentially consist of custom manufacture of ready-to-use paints from their basic components and paint mixing services (including consultancy related thereto). While these services may have some points of contact with paints in Class 2, for the same reasons as those outlined above in relation to the opponent’s goods in Class 2, they are not similar to the contested goods in Class 1 since they share no relevant factors.

In view of the above, the contested goods in Class 1 must be considered dissimilar to the opponent’s goods and services in Classes 2 and 40.

Contested goods in Class 2

As mentioned above, while the limitations of the contested goods in Class 2 will be taken into account, they will not be mentioned in the comparisons that follow.

The contested varnishes are included in the opponent’s varnishes. Therefore, they are identical.

The contested paints, including wood stains, bactericidal paints, fire-resistant paints, ceramic paints, aluminium paints, printing ink and printers' pastes (which are paints for use in the printing industry), coatings (paints), coatings are included in, or overlap with, the opponent’s paints. Therefore, they are identical.

The contested lacquers, including lacquers based on varnishes and lacquers for staining are included in the opponent’s lacquers. Therefore, they are identical.

The contested drying preparations are included in, or overlap with, the opponent’s siccatives (which consist of drying agents used as a component of paint). Therefore, they are identical.

As regards the contested bleach, colorants, pigments and binding preparations for paints, even if they are listed after the term 'paints, including,…' these goods are not paints but rather preparations used to tint a base paint or for mixing paints. Therefore, they cannot be considered identical to the opponent’s paints. However, these contested goods as well as the contested thinners for paints; thickening agents and water-based paint hardening agents are similar to the opponent’s paints since they can target the same relevant public, share the same distribution channels and are usually produced by the same undertakings. Furthermore, they are complementary to each other since the opponent’s goods can be essential for the use of the contested goods.

The contested metals in foil and powder form for painters, decorators, printers and artists are also similar to the opponent’s paints since they can target the same relevant public, share the same distribution channels and are usually produced by the same undertakings.

The contested hardening agents for varnishes and thinners for lacquers are similar to the opponent’s varnishes and lacquers respectively since they can target the same relevant public, share the same distribution channels and are usually produced by the same undertakings. Furthermore, they are complementary to each other since the opponent’s goods can be essential for the use of the contested goods.

The contested preservatives against rust, in particular anti-corrosive preparations, preservatives for metals, minium, red lead and orange lead, primer and protective coatings for automobile bodies; primers; mordants; polishes (glazes); preservatives against deterioration of wood, including wood coatings (paints) and wood mordants are similar to the opponent’s lacquers since they can target the same relevant public, share the same distribution channels and are usually produced by the same undertakings.

Contested goods in Class 17

As mentioned above, while the limitations of the contested goods in Class 17 will be taken into account, they will not be mentioned in the comparisons that follow.

The contested insulating articles, insulating paints, insulating varnish consist of or include paints and varnishes with (thermal) insulating properties. Therefore, they are similar to the opponent’s paints and varnishes respectively in Class 2 since, even if they may have different properties can still have a similar nature and purpose to paint or varnish a vehicle, target the same relevant public, share the same distribution channels and be produced by the same undertakings.

However, the contested insulating oil, insulating bands, substances for insulating buildings against moisture do not consist of or include insulating paints or varnishes and have a different nature and methods of use than the opponent’s goods in Class 2. Therefore, these contested goods, even if they may conceivably target the same relevant public, are unlikely to usually share the same distribution channels or otherwise be found in the same sections of department stores. Furthermore, they are not complementary to each other or in competition and are also unlikely to usually be produced by the same undertakings. Consequently, the contested insulating oil, insulating bands, substances for insulating buildings against moisture cannot be considered similar to the opponent’s goods in Class 2 or the opponent’s services of custom manufacture of ready-to-use paints and paint mixing services (including consultancy related thereto) in Class 40. Moreover, for the reasons already outlined in detail above, the opponent’s treatment of materials in Class 40 and the contested insulating oil, insulating bands, substances for insulating buildings against moisture cannot be considered to have the same purpose or to be complementary to each other; they cannot be considered to target the same relevant public, share the same distribution channels or be usually produced and provided by the same undertakings. Therefore, these contested goods must be considered dissimilar to the opponent’s goods and services in Classes 2 and 40.

The remaining contested goods, namely artificial resins (semi-finished products), acrylic resins (semi-finished products); raw or semi-worked gum, gaskets and rings of rubber; semi-processed plastics, namely semi-finished products made of artificial resins and semi-finished products for insulating paints and insulating articles; plastic fibres, not for use in textiles; adhesive and self-adhesive tapes (other than for household purposes or for medical purposes); filtering materials (semi-processed foams or films of plastic); flexible pipes, not of metal; lute essentially consist of different semi-finished products for use in the manufacture of goods or construction as well as adhesives, sealants and flexible pipes (not of metal). Even if some of these contested goods may be used for the manufacture of insulating paints, they are not similar to the opponent’s goods and services in Classes 2 and 40 for the same reasons as those set out in relation to the contested goods in Class 1. Therefore, all the remaining contested goods must also be considered dissimilar to the opponent’s goods and services.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention displayed by the end users (both the public at large as well as professionals) in relation to the goods concerned in Class 2 is likely to be higher than average. In this respect, the fact that a type of product is not purchased regularly by the average consumer, which applies to the goods concerned in Class 2, suggests that that consumer’s level of attention will be fairly high. Moreover, the consumer’s choice of coatings and other goods in Class 2 encompasses several considerations, namely, functional considerations such as the suitability of the material to the surface that is to be painted or treated, whether the surface concerned

is located indoors or outdoors, and aesthetic considerations. Those sorts of considerations require a comparison and some reflection before a choice is made, and therefore a higher level of attention (see to this effect 05/10/2015, R 2827/2014-5, CROWN EASYCLEAN / Easyclean (fig.), § 16; 11/12/2014, T-12/13, ARTI, EU:T:2014:1054, § 53-54). For the sake of clarity, these considerations apply even if the contested goods are limited to use in relation to vehicle manufacturing, repair and refinish and also apply for the same or similar reasons to the goods concerned in Class 17, which are also paints and varnishes but with insulating properties.

c) The signs

COLORMIX
Earlier trade mark	Contested sign

The relevant territory is Portugal.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word mark 'COLORMIX'.

The contested sign is a complex 3D shape mark consisting of a labelled can depicting numerous verbal and numerical elements over three different sections delimited by green horizontal lines and, on the sides, a thicker green vertical line, all on a white background. At the bottom of the can, there is a green rectangle with illegible white text which must be considered negligible. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. As the green rectangle at the bottom of the can is merely decorative and serves to contrast the hardly perceptible white text from the can’s white background, this element is likely to be disregarded by the relevant public and will therefore not be taken into consideration.

As regards the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into 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 this respect, while the applicant argues that the earlier mark will be broken down into the elements 'color' and 'mix' since the relevant public will understand the meaning of these English words, the opponent claims that 'COLORMIX' will not generally be understood as having any meaning, and will thus not be broken down into different elements, since the applicant failed to prove that the Portuguese public would understand these English words and the respective Portuguese words are 'cor' and 'mistura'. The opponent also mentions that there was a judicial request to cancel the earlier mark in which the Lisbon Court of Appeal ruled that despite the generalisation of the English language, it is not certain that every consumer has knowledge of the meaning of the English words 'color' and 'mix' and that, on the other hand, the word 'colormix' is a new fantasy word that has no meaning and does not exist in Portuguese or English, just coinciding with the two words phonetically, but not graphically. Furthermore, the Appeal Court ruled that the word 'colormix' cannot therefore be regarded as having no distinctive character but even if that was the case, it would still has to be concluded based on the proven facts that over the years, since 1990, with the advertising investments and use of the trade mark made, it had acquired a distinctive character.

However, although the opponent indicated the case reference (43/14.7YHLSB.L1) and the date (06/07/2017) of the judgment and reproduced, in English, two paragraphs allegedly from the ruling of the Lisbon Court of Appeal, it did not submit a copy thereof. Therefore, in the absence of any actual evidence of the ruling referred to, these claims must be considered unsubstantiated. Furthermore, the General Court has stated that the knowledge of English, admittedly to varying degrees, is relatively widespread in Portugal and that, although it cannot be claimed that the majority of the Portuguese public speaks English fluently, it may, however, reasonably be presumed that a significant part of that public has at the very least a basic knowledge of that language (16/01/2014, T-528/11, Forever, EU:T:2014:10, § 68). In this respect, 'color', despite its American spelling, is a basic English word, and the General Court has also held that the majority of the relevant public in the European Union will understand its meaning and that a significant part will associate the word 'color' with the concept of 'colour' (see, to this effect, 06/04/2017, T‑178/16, Policolor, EU:T:2017:264, § 36 and 54). Moreover, the word 'MIX' is also a basic English word meaning 'two or more different things combined’ and a commonly used term, widely used for various mixtures and will therefore generally be understood by the public in the European Union (see, to this effect, 09/04/2019, R 1734/2018-4, STAR-MIX (fig.) / STAR (fig.) et al., § 34; 01/03/2018, R 818/2017-2, FERRODIX / FERROMIX, § 26).

Therefore, although it cannot be fully excluded that a part of the relevant public will perceive 'colormix' as a fanciful word without any meaning, a significant part of the Portuguese consumers will break it down into the elements 'color' and 'mix' and understand them as referring to 'a combination of colours' which has a descriptive meaning in relation to the goods concerned. Nevertheless, the earlier mark must be recognized as validly registered as the validity of earlier trade marks may not be called into question in opposition proceedings before the Office (24/05/2012, C-196/11, F1-LIVE, EU:C:2012:314). Therefore, the only element of which the earlier mark consists must be considered to have at least a weak distinctiveness in relation to the goods in question.

As regards the verbal element 'COLOMIX', depicted at the top of the contested sign, the applicant argues that since 'colo' means neck in Portuguese this verbal element will be understood as meaning 'a mixture of necks'. In this respect, the opponent points out that 'colo' is hardly used outside the medicine/anatomy field and that the commonly used word for neck in Portuguese is 'pescoço'. Be this as it may, the goods concerned have nothing to do with necks or the body in general and, as mentioned by the applicant itself, 'a mixture of necks' does not mean anything, really, and would in fact be non-sensical, in particular in relation to the goods in question. Furthermore, since it has been concluded above that a significant part of the public will perceive (and understand) 'MIX' as an English word, it will not expect the preceding element to consist of a Portuguese word, especially if the resulting meaning would not lead to a logical conceptual unit. Therefore, while a significant part of the public will break the verbal element 'COLOMIX' down into the elements 'colo' and 'mix' since it will understand the latter for the reasons set out above, the preceding element 'colo' is unlikely to be understood as meaning 'neck' but is rather likely to be perceived as a contraction of the English word 'color/colour' which, as concluded above, is also an English word that will be understood and which has a clear meaning in relation to the goods concerned, both in isolation and in conjunction with the word 'mix', or otherwise simply as a fanciful word without any particular meaning. Therefore, the verbal element 'COLOMIX' of the contested sign is likely to be associated, at least by a part of the public, with the same concept as that of the earlier mark, namely 'a combination of colours' and thus be perceived as weakly distinctive in relation to the goods concerned, although a part of the public may also perceive it as meaningless, when considered as a whole, and thus as normally distinctive.

The second section of numerical and verbal elements of the contested sign contains the following elements: '2:1' depicted in large size to the left followed by the slightly smaller elements '2K STANDARD', 'KLARLACK' and 'KRATZFEST' depicted over three lines to the right. Even if words such as 'KLARLACK' and 'KRATZFEST' have no meaning in Portuguese, as argued by the applicant, the relevant public will still perceive this whole section of the contested sign merely as containing product information. In this respect, it must be borne in mind that the contested sign consists of a labelled can and the verbal elements 'KLARLACK' and 'KRATZFEST' will be perceived by consumers within the context of this sign. The shape of the can itself does not depart from the norm or customs of the sector concerned and will thus be perceived merely as the packaging of the goods and it is, therefore, non-distinctive as such. It is common practice to include on the product packaging descriptive information about the product itself. Furthermore, elements such as '2:1' are commonly used in relation to the products concerned to indicate that they have or incorporate two functions or properties in one product. Moreover, the word 'STANDARD' is commonly used in trade and a basic English word and will therefore be understood by the relevant public as a reference to a product which is of a normal quality or sort of the type of product in question. Therefore, the average consumer, who is reasonably well informed and reasonably observant and circumspect, will readily understand that the numerical and verbal elements of this section of the contested sign concern information about the product itself and not indications to distinguish their commercial origin. As a result, even if the verbal elements 'KLARLACK' and 'KRATZFEST' will not be understood as such, they will still be perceived, in the context of the contested sign, as elements providing product information and all the elements of the second section in the contested sign will therefore be perceived as secondary elements with little trade mark significance.

The third section of numerical and verbal elements, which are even smaller, but not negligible, such as '2:1', '2K', 'STANDARD', 'CLEARCOAT' and 'TRASPARENTE', will also be perceived as secondary elements merely providing product information for the same reasons as those set out above.

Finally, as regards the green horizontal and vertical lines depicted on the label of the contested sign, they will be perceived as decorative elements that serve to delimit the different sections of the label itself and are therefore non-distinctive as such. Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, in view of all the above, the verbal element 'COLOMIX', even if weakly distinctive, at least for a part of the public, will still be perceived by the relevant public as the primary indicator of the commercial origin of the goods concerned.

Although the verbal element 'COLOMIX' is the largest verbal element in the contested sign and depicted at the top, the numerical and verbal elements depicted underneath, in the second section of the contested sign, are also relatively large and depicted in the middle. Therefore, the verbal element 'COLOMIX' and the numerical and verbal elements depicted in the second section are the co-dominant (visually most eye-catching) elements in the contested sign.

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

Visually, the signs coincide in the letters ‘COLO*MIX’ in the only verbal element of which the earlier mark consists and in the co-dominant word of the contested sign, and which is the element on which consumers will primarily focus their attention as explained above. The only difference between these two verbal elements is the additional letter ‘R’ in the middle of the earlier mark and the colour and slight stylisation of the word in the contested sign which will however not detract the consumer’s attention away from the verbal element as such. Consequently, these two verbal elements will be perceived as quasi-identical. The signs also differ in the additional elements of the contested sign as described above which will however - regardless of whether their exact meaning is understood or not - be perceived as secondary elements as also explained. Therefore, the additional elements in the contested sign will have less impact in the overall impression produced by the sign in the mind of consumers.

Therefore, the signs are visually similar to at least an average degree.

Aurally, both signs will be pronounced in three syllables, namely as ‛CO‑LOR-MIX’ and ‛CO‑LO-MIX’ respectively. The additional numerical and verbal elements will not be pronounced by consumers when referring to the contested sign. This is because they are secondary elements for the reasons set out above and consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 09/04/2013, T-337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLRG5 (fig.) / Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 et al., EU:T:2016:571, § 56). Consequently, the only aural difference between the signs is the short soft sound of the additional letter ‛R’ at the end of the second syllable in the earlier mark which will have little impact in the overall aural impression produced by the signs.

Therefore, the signs are aurally quasi-identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, at least to a significant part of the public in the relevant territory. For the part of the public that may associate both ‛COLORMIX’ in the earlier mark and ‛COLOMIX’ in the contested sign with the same concept of a combination of colours, even if this concept is weak, the signs will still be perceived as conceptually similar at least to an average degree since the additional elements in the contested sign will either convey a descriptive conceptual content (such as the elements '2:1' and 'STANDARD' as explained above) or otherwise, even if they do not convey any specific meaning (such as 'KLARLACK' and 'KRATZFEST'), will still be perceived as secondary elements providing product information of some sort, as also explained. Therefore, the additional elements in the contested sign will not have a significant impact in the overall conceptual impression produced by the contested sign in the mind of consumers. For the part of the public that may not associate the element ‛COLO’ in the contested sign with any meaning, the signs are conceptually similar only to a low degree to the extent that they coincide in the concept of ‛MIX’.

Therefore, the signs are either conceptually similar at least to an average degree or otherwise to a low degree.

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. For the sake of clarity, even if the opponent, in response to the applicant’s observations, referred to distinctiveness of the earlier mark deriving from the opponent’s use of it since 1990 and the mention of the Lisbon Court of Appeal’s considerations in this respect, those claims were not made within the time limit set to substantiate the opposition and cannot therefore be taken into account. In any event, as already mentioned above, the opponent did not submit a copy of the ruling referred to or any evidence of use of the earlier mark and these claims are therefore in any case unsubstantiated.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question, namely paints, varnishes, lacquers and siccatives in Class 2, at least for a significant part of the relevant public.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings

Account should also be 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).

In the present case, the goods have been found partly identical or similar and partly dissimilar and the degree of attention of the relevant public will be higher than average.

The distinctiveness of the earlier mark is low. However, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, FLEXI AIR, EU:T:2005:102, § 61).

In this respect, the signs have been found visually similar to at least an average degree and aurally quasi-identical on account of their considerable coincidences in the only verbal element ‛COLORMIX’ of the earlier mark and in the co-dominant verbal element ‛COLOMIX’ of the contested sign. This is also the element on which consumers will focus their attention and which will be perceived as the primary indicator of the commercial origin in the contested sign for the reasons set out in detail above in section c) of this decision. At least for a significant part of the public, the signs have also been found conceptually either similar to at least an average degree or otherwise to a low degree.

Therefore, in the present case, even if the distinctiveness of the earlier mark has been considered to be low, bearing in mind the principles of interdependence and imperfect recollection as outlined above, a likelihood of confusion cannot be safely excluded on the part of the public. In view of the considerable visual similarities and the aural quasi-identity between the signs and their conceptual coincidence (even if low for a part of the public), it is conceivable that the relevant consumers (who need to rely on their imperfect recollection of trade marks even if they pay a high degree of attention - 21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54) might still believe that the identical or similar goods offered under the signs originated from the same or economically linked undertakings. Indeed, the verbal elements ‛COLORMIX’ and ‛COLOMIX’ are both depicted as one word and are quasi-identical as such and the additional elements in the contested sign are all secondary elements of little trade mark significance for the reasons set out above in section c) of this decision and will therefore not be recalled by consumers as distinguishing elements between the signs. Therefore, regardless of whether or not the element ‛COLO’ in the contested sign will be associated with the meaning of colour (as present in the earlier mark) or otherwise as conveying no specific meaning, the one letter difference between the words ‛COLORMIX’ and ‛COLOMIX’ will still be insufficient to safely exclude a likelihood of confusion between the signs within the meaning of Article 8(1)(b) EUTMR.

Furthermore, for the sake of completeness, for the (small) part of the public in the relevant territory that may not associate either ‛COLORMIX’ or ‛COLOMIX’ with any meaning, as put forward by the opponent, and to the extent that this part of the public may constitute a non-negligible part of consumers, the likelihood of confusion on this part of the public would be even greater since the earlier mark and the quasi-identical verbal elements ‛COLORMIX’ and ‛COLOMIX’ would be perceived as distinctive to a normal degree by this part of the public. Furthermore, even if the signs would not be conceptually similar for this part of the public, they would be even more likely to confuse the signs in their imperfect recollection of them, or otherwise associate the goods concerned with the same or economically linked undertakings in view of the considerable visual similarities and the aural quasi-identity between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in the relevant territory and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration.

As a final remark, the Opposition Division notes that on 22/01/2020, after the closure of the adversarial part of the proceedings, the applicant filed a request to be granted an opportunity to refute the opponent’s arguments submitted on 15/01/2020 in reply to the applicant’s response to the opposition and, at the same time, provided observations and evidence in reply to some of the opponent’s additional allegations. This request was eventually not granted and the Office indicated that these observations would not be taken into account. However, for the sake of completeness, the Opposition Division notes that the further observations and evidence submitted by the applicant cannot in any event change the outcome of the present proceedings. In this respect, by this additional submission the applicant essentially contests the opponent’s claims that the English words ‛COLOR’ and ‛MIX’ will not be understood by the relevant public in Portugal and also adduced some internet extracts showing use of the word ‛MIX’ on Portuguese websites in support. However, since the Opposition Division also concluded that the public in the relevant territory would understand these English words as contended by the applicant, or at least a significant part thereof, and took that into account in the assessment carried out, these observations and the evidence submitted cannot in any event change the findings reached, namely that a likelihood of confusion between the signs on the part of the relevant public cannot be safely excluded for the reasons set out in detail above.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar to the opponent’s goods and services. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

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

Since the opposition is successful for only some 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 Opposition Division

Begoña URIARTE VALIENTE

Sam GYLLING

Holger KUNZ

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.