OPPOSITION No B 3 102 186

IGM Group B.V., Gompenstraat 49, 5145 RM Waalwijk, Netherlands (opponent), represented by Taylor Wessing N.V., Kennedyplein 201, 5611 ZT Eindhoven, Netherlands (professional representative)

a g a i n s t

Fosfa akciová společnost, Břeclav-Poštorná, 691 41 Hraniční 268, Czech Republic (holder), represented by Jakub Chytil, Rybná 678/9, 110 00 Praha, Czech Republic (professional representative).

On 02/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 186 is partially upheld, namely for the following contested goods:

Class 1: Chemicals used in industry; manures; manures; chemical substances for preserving foodstuffs; water testing chemicals; water flooding additives; water decalcifying products; gas for the preparation of soda water; chemical preparations for neutralizing water; chemical and organic compositions for use in the manufacture of food and beverages; sulfates; sulfides; salts for industrial purposes; phosphates; phosphates for potable water treatment; phosphates [fertilisers]; organic-bleaching chemicals; chemical compositions for water treatment; chemical compositions for water treatment; industrial salt for water purification; chemical compositions for water treatment; oil soluble organic sulfanate surfactants; chemical products for preventing scale; phosphorus; sodium phosphate; chemical preparations for use as corrosion inhibitors; fireproofing preparations; chemical bonding agents [other than for household or stationery use]; gases for industrial purposes; test gases; laboratory gases; roofing adhesive; adhesives [sizing]; adhesives for glazing; soil for growing; growing media; peat for the cultivation of seeds; horticulture growing media; substances for soil-free growing [agriculture]; expanded clay for hydroponic plant growing [substrate]; mineral products for use in growing plants; expanded clay for hydroponic plant growing [substrate]; fertilized bases made of mineral wool for growing plants; fertilized preparations of mineral wool for growing plants; growing media made from coconut coir dust; putties, and fillers and pastes for use in industry; antioxidants for use in the manufacture of beverages; antioxidants for use in the manufacture of food products; gases for use in welding; chemical additives for food; wine finings; additives (chemical -) for use in fermentation.

2. European Union trade mark application No 18 099 401 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent initially filed an opposition against all the goods of European Union trade mark application No 18 099 401 ‘Omnisal’. However, in its communication of 10/04/2020, the opponent limited the scope of opposition and indicated that the opposition is directed against some of the goods, namely against all the goods in Classes 1 and 2. The opposition is based on the following international registrations designating the European Union:

1) international registration No 1 293 011 ‘OMNIRAD’;

2) international registration No 1 409 956 ‘OMNIVAD’;

3) international registration No 1 292 677 ‘OMNICAT’.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international registrations No 1 293 011 ‘OMNIRAD’ and No 1 409 956 ‘OMNIVAD’, both designating the European Union.

a) The goods

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

International registration No 1 293 011 ‘OMNIRAD’ (earlier mark 1):

Class 1: Chemical additives in the nature of initiators for use in the manufacture of ultraviolet light-curable inks; chemical coatings and adhesives for use in industry; chemical preparations to be applied to coatings for absorbing ultraviolet light.

Class 2: Additives not being chemical preparations for ultraviolet light-curable inks.

International registration No 1 409 956 ‘OMNIVAD’ (earlier mark 2):

Class 1: Chemical additives in the nature of initiators for use in the manufacture of ultraviolet light-curable inks; adhesives for use in industry; chemical coatings for use in industry, namely, chemical coatings used in the manufacture of printed circuit boards; polymer coating agents for paper; chemical preparations to be applied to coatings for absorbing ultraviolet light; acrylic monomers; chemical polymeric additives for lubricants; chemicals for forestry, except fungicides, herbicides, insecticides and parasiticides; chemicals for use in industry and science; fire extinguishing compositions; manure; polyamide; polyurethanes; soldering chemicals; tanning agents for use in the manufacture of leather; tempering preparations; agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides; chemical preparations for preserving foodstuffs; horticultural chemicals, except fungicides, herbicides, insecticides and parasiticides; unprocessed acrylic resins; unprocessed epoxy resin; unprocessed phenolic resins; unprocessed plastics; unprocessed polyester resins; unprocessed polypropylene resins; unprocessed polystyrene resins; unprocessed silicone resins; unprocessed thermoplastic compounds, thermoplastic elastomer resins and thermoplastic concentrates for use in manufacturing in a wide variety of industries; unprocessed artificial resin.

The contested goods are the following:

Class 1: Chemicals used in industry; manures; manures; chemical substances for preserving foodstuffs; water testing chemicals; water flooding additives; water decalcifying products; gas for the preparation of soda water; chemical preparations for neutralizing water; chemical and organic compositions for use in the manufacture of food and beverages; sulfates; sulfides; salts for industrial purposes; phosphates; phosphates for potable water treatment; phosphates [fertilisers]; organic-bleaching chemicals; chemical compositions for water treatment; chemical compositions for water treatment; industrial salt for water purification; chemical compositions for water treatment; oil soluble organic sulfanate surfactants; chemical products for preventing scale; phosphorus; sodium phosphate; chemical preparations for use as corrosion inhibitors; fireproofing preparations; chemical bonding agents [other than for household or stationery use]; gases for industrial purposes; test gases; laboratory gases; roofing adhesive; adhesives [sizing]; adhesives for glazing; soil for growing; growing media; peat for the cultivation of seeds; horticulture growing media; substances for soil-free growing [agriculture]; expanded clay for hydroponic plant growing [substrate]; mineral products for use in growing plants; expanded clay for hydroponic plant growing [substrate]; fertilized bases made of mineral wool for growing plants; fertilized preparations of mineral wool for growing plants; growing media made from coconut coir dust; putties, and fillers and pastes for use in industry; antioxidants for use in the manufacture of beverages; antioxidants for use in the manufacture of food products; gases for use in welding; chemical additives for food; wine finings; additives (chemical -) for use in fermentation.

Class 2: Anti-corrosive preparations; anti-corrosive preparations; preservatives; paints and washes; metal in foil and powder form for use in painting, decorating, printing and art; lacquers and varnishes; protective preparations for metals; anti-fouling paints.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

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 chemicals used in industry; manures; manures; chemical substances for preserving foodstuffs; water testing chemicals; water flooding additives; water decalcifying products; gas for the preparation of soda water; chemical preparations for neutralizing water; chemical and organic compositions for use in the manufacture of food and beverages; sulfates; sulfides; salts for industrial purposes; phosphates; phosphates for potable water treatment; phosphates [fertilisers]; organic-bleaching chemicals; chemical compositions for water treatment; chemical compositions for water treatment; industrial salt for water purification; chemical compositions for water treatment; oil soluble organic sulfanate surfactants; chemical products for preventing scale; phosphorus; sodium phosphate; chemical preparations for use as corrosion inhibitors; fireproofing preparations; chemical bonding agents [other than for household or stationery use]; gases for industrial purposes; test gases; laboratory gases; roofing adhesive; adhesives [sizing]; adhesives for glazing; substances for soil-free growing [agriculture]; mineral products for use in growing plants; fertilized bases made of mineral wool for growing plants; fertilized preparations of mineral wool for growing plants; antioxidants for use in the manufacture of beverages; antioxidants for use in the manufacture of food products; gases for use in welding; chemical additives for food; wine finings; additives (chemical -) for use in fermentation are identical to the opponent’s adhesives for use in industry; chemicals for use in industry and science; manure; agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides; chemical preparations for preserving foodstuffs; horticultural chemicals, except fungicides, herbicides, insecticides and parasiticides, either because they are identically contained in both lists, for example manure (indicated twice as manures in the list of the contested goods); or because the opponent’s goods include the contested goods, for example chemicals for use in industry and science include, as a broader category, the contested chemical and organic compositions for use in the manufacture of food and beverages; sulfates; sulfides; salts for industrial purposes; phosphates; or because the opponent’s goods are included in, or overlap with, the contested goods, for example the contested chemical additives for food include or overlap with the opponent’s chemical preparations for preserving foodstuffs. Therefore, all these goods are identical.

The contested soil for growing; growing media; peat for the cultivation of seeds; horticulture growing media; expanded clay for hydroponic plant growing [substrate]; expanded clay for hydroponic plant growing [substrate]; growing media made from coconut coir dust are at least similar to the opponent’s agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides; horticultural chemicals, except fungicides, herbicides, insecticides and parasiticides; manures because they all share the same purpose, namely to be applied to soil or plant tissue in order to supply one or more of the nutrients essential for plant growth. The goods under comparison have similar methods of use, may coincide in their producer and be distributed through the same channels, and are usually of interest to the same consumers. Furthermore, they may be in competition or complementary to each other.

The contested putties, and fillers and pastes for use in industry are similar to the opponent’s adhesives for use in industry as they have similar methods of use, usually coincide in their producer, are distributed through the same channels and target the same relevant consumers. Furthermore, they are in competition.

Contested goods in Class 2

The contested goods in this class effectively consist of paints, colourants, lacquers and preparations used for protection against corrosion. The opponent claims that the contested goods are highly similar to the opponent’s additives not being chemical preparations for ultraviolet light-curable inks, as both additives and preparations are substances that are added to another substance in order to affect its characteristics (e.g. its texture, colour or shelf life). Therefore, these goods have a similar purpose and can coincide in their relevant public and distribution channels.

It should be noted that the degree of similarity between the goods and/or services is a matter of law, which must be assessed ex officio by the Office, even if the parties do not comment on it. However, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). Consequently, what does not follow from the evidence or arguments submitted by the parties, or is not commonly known, should not be speculated on or extensively investigated ex officio (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31-32).

To the best of the Opposition Division’s knowledge, the opponent’s goods are additives for use in the manufacture of inks. Even if they may be used for the manufacture of some of the contested goods (such as paints), they are not similar. The opponent’s goods have a different nature, purpose, and method of use to the contested goods, which consist of finished products for coating or painting surfaces. Furthermore, they do not target the same relevant public or share the same distribution channels. The opponent’s goods target manufacturers of ultraviolet light-curable inks, while the contested goods are ready-to-use goods targeting end consumers, whether professionals or the public at large. The goods in question are neither in competition nor complementary to each other, since the opponent’s goods are not essential or important for the use of the contested goods, or vice versa. Moreover, the goods under comparison are not usually produced by the same undertakings. Therefore, and in the absence of any evidence to the contrary, the contested goods are considered dissimilar to the opponent’s goods. For the same reasons, the contested goods are also dissimilar to the opponent’s goods in Class 1, which are various chemicals used in industry.

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 consumers (both the public at large and professionals), in relation to the relevant goods in Class 1, is likely to be higher than average. This is because the goods in question are various chemical substances and the impact of chemicals on safety will result in an increase in the relevant consumer’s degree of attention (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41).

c) The signs

OMNIRAD (earlier mark 1) OMNIVAD (earlier mark 2)	Omnisal
Earlier trade marks	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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier marks are word marks comprising a single verbal element ‘OMNIRAD’ and ‘OMNIVAD’, respectively. The contested sign is a word mark comprising a single verbal element ‘Omnisal’. The protection offered by the registration of a word mark applies to the word(s) stated in the application for registration and not to the individual graphic or stylistic characteristics that that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word marks in question are depicted in upper-, lower- or title-case letters. To simplify the analysis and comparison of the signs, they will all be referred to in upper-case letters.

The verbal elements ‘OMNIRAD’ and ‘OMNIVAD’ of the earlier marks are fanciful words that do not convey any particular meaning for the relevant public in the relevant territory. However, the Opposition Division agrees with the opponent that the component ‘OMNI*’ might be understood by a part of the relevant public as meaning ‘all’ or ‘every’ (information extracted from Lexico on 25/11/2020 at https://www.lexico.com/definition/omni-), even without realising that the prefix originates from Latin (27/06/2016, R 807/2015‑5, OMNIVIU / omnivit (fig.) et al., § 29). However, the concept conveyed by the prefix ‘OMNI*’ is vague and not directly or clearly related to the relevant goods in a way that could impair its distinctiveness. The component ‘*RAD’ of earlier mark 1 may be perceived as referring to the chemical element ‘radium’ by part of the public. However, for a significant part of the public, the components ‘*RAD’ and ‘*VAD’ of the marks do not convey any particular meaning. Therefore, when perceived as a whole, the verbal elements ‘OMNIRAD’ and ‘OMNIVAD’ both have an average degree of distinctiveness for this part of the public. Similarly, an average degree of distinctiveness can be established for the part of the public that will perceive the verbal elements ‘OMNIRAD’ and ‘OMNIVAD’ as meaningless words.

The above reasoning regarding the perception and distinctiveness of the component ‘OMNI*’ equally applies in relation to the verbal element of the contested sign, ‘OMNISAL’. Although the Spanish- and Portuguese-speaking part of the public may perceive the component ‘*SAL’ as referring to ‘salt’ (information extracted from Lexico on 25/11/2020 at https://www.lexico.com/es-en/traducir/sal), as this word exists as such in the respective languages, for most of the relevant public this element is meaningless. In any case, the component ‘*SAL’ does not have in itself, nor create any descriptive or allusive expression when ‘OMNISAL’ is perceived as a whole, in relation to the goods in question. Therefore, the verbal element ‘OMNISAL’ has an average degree of distinctiveness irrespective whether the relevant public will perceive the abovementioned meanings or see it as one meaningless word.

Bearing in mind that the overall similarity between signs is greater in the absence of any meaningful elements that could create a conceptual difference between them, the Opposition Division finds it appropriate to focus the comparison on the part of the public that will not perceive any meanings in the components ‘*RAD’ and ‘*VAD’ of the earlier marks and ‘*SAL’ of the contested sign.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘OMNI*’, which are the first four letters of the earlier marks and of the contested sign. The signs also share the penultimate letter of their verbal elements, ‘A’. They differ in their remaining letters, namely ‘R*D’ and ‘V*D’ of the earlier marks, and ‘S*L’ of the contested sign.

The earlier marks and the contested sign are composed of seven letters, five of which coincide. Moreover, bearing in mind that the public reads from left to right, the coinciding four letters at the beginnings of the marks, ‘OMNI* will be the first to be noticed by the relevant consumers. The two differing letters ‘S*L’ at the end of the verbal element ‘OMNISAL’ will not distract the consumers’ attention from the abovementioned commonalities. Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will perceive the meaning of the common element ‘OMNI*’ as explained above, the signs are conceptually similar to at least an average degree. For the part of the public that will perceive all the signs as composed of meaningless words, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade marks enjoy a high degree of distinctiveness as a result of their long-standing and intensive use in connection with all the goods for which they are registered. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meanings for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

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/or 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.

The goods are partly identical, partly similar and partly dissimilar. They target the public at large and the professional public, who have a higher-than-average degree of attention. The earlier marks possess a normal degree of inherent distinctiveness.

Despite the differences in some letters, the signs are visually, aurally and conceptually similar to at least an average degree, for at least part of the public. This is because the contested sign reproduces most of the letters contained in both earlier marks and the difference in only two letters at the end of the contested sign is not sufficient to outweigh this commonality.

Likelihood of confusion includes the likelihood of association, in the sense that the public, may, if not confuse the relevant signs directly, conclude that they designate different lines of goods from the same undertaking or from economically linked undertakings. It is frequent practice nowadays for companies to make small variations in their trade marks, for example by changing some letters or adding verbal elements, in order to name a new line of products. Given that the contested sign reproduces most of the letters of the earlier marks and incorporates the same meaningful (at least for part of the public) element, it is highly conceivable that the relevant consumers, even expressing a higher-than-average degree of attentiveness, may perceive the contested sign as a variation or newer version of the earlier mark when encountering the marks in the context of identical or similar goods. They might therefore be led to believe that the goods in question come from the same undertaking or economically linked undertakings.

Taking into account the fact that average consumers rarely have the chance to make a direct comparison between different marks, and that even the professional public needs to rely on its imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54), as well as the abovementioned principle of interdependence, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s international registrations No 1 293 011 ‘OMNIRAD’ and No 1 409 956 ‘OMNIVAD’, both designating the European Union. 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.

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

The remaining contested goods are dissimilar to the opponent’s goods. 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

The opponent has also based its opposition on international registration No 1 292 677, ‘OMNICAT’, designating the European Union. Since this mark covers the same scope of goods as international registration No 1 293 011, ‘OMNIRAD’, compared above, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Zuzanna STOJKOWICZ

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.