OPPOSITION No B 3 100 287

Productos Concentrol, S.A., Polg. Ind. de Girona, 17457 Riudellots de la Selva (Girona), Spain (opponent), represented by Consulpi Propiedad Industrial, S.L., Rambla Badal, 137-139-Esc B-Ent. 1, 08028 Barcelona, Spain (professional representative)

a g a i n s t

Helmut Uhlig, Hauptstr. 29a, 17039 Neddemin, Germany (applicant), represented by Hagen Schäfer, Fritz-Reuter-Str. 5, 17033 Neubrandenburg, Germany (professional representative).

On 31/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 287 is partially upheld, namely for the following contested goods:

Class 1: Chemical substances, chemical materials and chemical preparations.

2. European Union trade mark application No 18 098 210 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 098 210 for the word mark ‘CEHATROL’, namely against all the goods in Class 1. The opposition is based on European Union trade mark registration No 17 739 021 for the word mark ‘CERATROL’. 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 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, 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: Polyester resins [unprocessed]; unsaturated polyester resins; unprocessed polyarylate resins; adhesive compounds with a base of epoxy resins; epoxy resins, unprocessed; epoxy resin based preparations for use on wood; phenolic resins; mould-release preparations; mould-release preparations; mould-release preparations; mould releasing agents having a water and solvent base; asphalt release agent; form release agents for use in the concrete industry; mold-release compounds for use in the plastics industry; food-grade wax for the food industry.

The contested goods are the following:

Class 1: Chemical substances, chemical materials and chemical preparations, and natural elements; additives, chemical, to motor fuel; detergent additives for fuels; chemical additives for fuel treatment; chemical additives for use in the production of fuels; chemical additives for use with internal combustion engine fuels.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested chemical substances, chemical materials and chemical preparations include, as broader categories, or overlap with, the opponent’s epoxy resins, unprocessed; epoxy resin based preparations for use on wood. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested natural elements are a subset of the chemical elements (excluding those that appear in other classes, e.g. iron, beryllium and magnesium, which appear in Class 6, and gold and silver, which appear in Class 14) including hydrogen, nitrogen, phosphorus and potassium. These goods have nothing relevant in common with any of the opponent’s goods, which are substances that are not naturally occurring, but are complex chemical compositions resulting from various chemical processes and transformations. Even though some of the opponent’s goods may contain natural elements as part of their composition, this is not sufficient in itself to find that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T‑98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, raw materials that are subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of their nature, aim and intended purpose (03/05/2012, T‑270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T‑288/12, Zytel, EU:T:2014:196, § 39-43). Finally, the goods are offered by different undertakings, have different methods of use and are not in competition with each other. Therefore, the contested natural elements are dissimilar to all the goods for which the earlier trade mark is registered.

The opponent’s polyester resins [unprocessed]; unsaturated polyester resins; unprocessed polyarylate resins; adhesive compounds with a base of epoxy resins; epoxy resins, unprocessed; epoxy resin based preparations for use on wood; phenolic resins comprise a wide range of synthetic resins, which are any synthetic organic compound consisting of a non-crystalline or viscous liquid substance. Synthetic resins comprise a large class of synthetic products that have some of the physical properties of natural resins but are different chemically. Synthetic resins are not clearly differentiated from plastics.

The opponent’s mould-release preparations (listed three times); mould releasing agents having a water and solvent base; asphalt release agent; form release agents for use in the concrete industry; mold-release compounds for use in the plastics industry; food-grade wax for the food industry comprise a wide range of mould-release preparations, compounds and agents, which are a type of lubricant. They are used to prevent surfaces from bonding to the mould in injection moulding without damaging the finish of the final item. They are also used to protect moulds from corrosion during storage and allow objects to be easily removed from moulds. Moreover, this ensures a longer life for the mould, and can help to promote efficiency and prevent difficult clean-ups where items have become stuck. Although primarily used for releasing objects in injection moulding, these lubricants often have a wider range of applications. They are used to stop rubber car door joints from sticking and drying, to protect from weld splatters, and can be used within the home to lubricate drawers, curtain rails and windows, and in various industries, including food, plastics and concrete enterprises.

The remaining contested goods, namely additives, chemical, to motor fuel; detergent additives for fuels; chemical additives for fuel treatment; chemical additives for use in the production of fuels; chemical additives for use with internal combustion engine fuels are essentially fuel additives, which are compounds formulated to enhance the quality and efficiency of fuels used in engines. Fuel additives can help to avoid problems such as rough idling, weak acceleration, stuttering and stalling. In addition, they enhance engine performance, help in engine maintenance and prevent the build-up of sludge and other deposits in different areas of the engine, thereby effectively prolonging the life of the engine. Types of additives include metal deactivators, corrosion inhibitors, oxygenates and antioxidants, and they are available in a number of forms, such as liquid, powder or pill.

The opponent’s goods are products that are chemical in nature, as are the contested goods. However, the mere fact that their nature coincides to the extent that they can be generally classified as chemical products is not sufficient to find them similar. Special attention must be drawn to their specific purposes, namely production of fuel additives versus resins and mould-release preparations, as well as to their public. In the case in question, the relevant public is not the same, and these products are normally not manufactured by the same undertakings. Furthermore, they are not usually available in the same stores, or at least not in the same sections of stores. In addition, they differ in their methods of use and are neither complementary nor in competition. Bearing all the above in mind and considering that the contested goods are highly specialised products, and also that the opponent has not provided any specific argumentation or evidence to prove their alleged similarity to the earlier mark’s goods, they are considered dissimilar to the goods covered by the earlier mark.

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 in question.

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

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

3. The signs

CERATROL	CEHATROL
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a 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 reject the contested application.

The elements ‘CEHATROL’ and ‘CERATROL’ are meaningless, and therefore distinctive, in certain territories, for example in those countries where Bulgarian, French and Lithuanian are understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, French- and Lithuanian-speaking parts of the public.

Moreover, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are in upper- or lower-case letters. Neither of the signs in question departs from the usual way of writing since both signs are entirely in upper-case letters, which is a fairly common way of depicting words. In addition, word marks have no elements that could be considered more dominant (eye-catching) than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the sequence of letters ‘CE*ATROL’ (and their sounds). However, they differ in their respective third letters (and their sounds), namely ‘R’ of the earlier mark and ‘H’ of the contested sign. The signs, which are distinctive, contain the same number of letters (eight) and their pronunciation is almost the same. The differentiating letters are placed in their middle sections and may go unnoticed by the public, considering the coincidences in all the other letters in these relatively long and meaningless verbal elements.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the 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

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and partly dissimilar, and they target the professional public, whose degree of attention may vary from average to high. The signs are visually and aurally similar to a high degree, and a conceptual comparison is not possible. Furthermore, the earlier mark has a normal degree of distinctiveness.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Bearing in mind the consumer’s imperfect recollection and the fact that the difference between the marks (which are quite long since both of them contain eight letters) is limited solely to their respective third letters, it is considered that this small difference may be overlooked by the relevant public and is not sufficient to outweigh the similarities between them. The Opposition Division considers that consumers might believe that the conflicting goods, which are identical, come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of Bulgarian-, French- and Lithuanian-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 17 739 021. 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 reject the contested application; therefore, there is no need to analyse the remaining part of the public.

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

The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1) 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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Dorothée SCHLIEPHAKE

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.