OPPOSITION Nо B 3 119 740

 

Eclectic Products LLC, 990 Owen Loop North, 97402 Eugene, United States of America (opponent), represented by HGF Limited, 1 City Walk, LS11 9DX Leeds, United Kingdom (professional representative) 

 

a g a i n s t

 

Xiaoping Xu, Room 406 No. 95 Road Qingnian Changan Town, Haining Zhejiang, People’s Republic of China (applicant), represented by Süle Law Firm, Frankel Leo U. 84. 1/7, 1023 Budapest, Hungary (professional representative).

On 31/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 119 740 is partially upheld, namely for the following contested goods:

	Class 1: Metal annealing preparations; soldering chemicals; soldering fluxes; adhesives for industrial purposes; viscose; gelatine for industrial purposes; synthetic resins, unprocessed; graphite for industrial purposes.
2.	European Union trade mark application No 18 192 004 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 13/05/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 192 004 (figurative mark), namely against some of the goods in Classes 1 and 16. The opposition is based on European Union trade mark registration No 11 199 437 ‘E6000’ (word mark). 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

 

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

 

Class 1: General purpose industrial and construction adhesives.

Class 17: Adhesive sealants for general purpose use and caulks.

The contested goods are the following:

 

Class 1: Metal annealing preparations; soldering chemicals; soldering fluxes; adhesives for industrial purposes; viscose; gelatine for industrial purposes; synthetic resins, unprocessed; graphite for industrial purposes.

Class 16: Stationery; gums [adhesives] for stationery or household purposes; starch paste [adhesive] for stationery or household purposes; office requisites, except furniture; teaching materials [except apparatus]; adhesives [glues] for stationery or household purposes; sealing compounds for stationery purposes.

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 adhesives for industrial purposes are included in the opponent's broad category of general purpose industrial and construction adhesives. Therefore, they are identical.

The contested soldering chemicals and soldering fluxes are applied to surfaces in a process of soldering, namely in a process of joining together two or more items by melting and putting a filler metal (solder) into the joint. Therefore, they have the same purpose as the opponent's general purpose industrial and construction adhesives and they are similar to these goods, as they can also coincide in distribution channels, end users and producers.

The contested metal annealing preparations are chemicals used in annealing processes, namely in heat treatments that alter the physical and sometimes chemical properties of materials (such as metals) to increase its ductility and reduce its hardness. Considered that the opponent’s adhesives in Class 1 also include adhesives for metals, these contested goods might be used in the same industry as those of the opponent’s goods. The contested viscose; gelatine for industrial purposes; synthetic resins, unprocessed; graphite for industrial purposes are used as a basis for or components of adhesive products. Although it cannot be excluded that these goods require a few processing steps to be considered finished products, they do share the inherent purpose of adhesives, namely joining together two or more items. Moreover, as correctly claimed by the opponent, the said goods belong to the same chemical industry and the same companies, namely manufacturers of adhesives and sealants, may produce the semi-processed goods, as well as the final ones. Therefore, as all these contested goods and the opponent's general purpose industrial and construction adhesives belong to one homogeneous product sector in the chemical industry and some of them might be used in the same industry (e.g. metallurgy), they - at least – originate from the same chemical companies, target the same users and are sold through the same channels of distribution. For these reasons, there is a low degree of similarity between the said goods and the opponent’s general purpose industrial and construction adhesives.

Contested goods in Class 16

The contested stationery; gums [adhesives] for stationery or household purposes; starch paste [adhesive] for stationery or household purposes; office requisites, except furniture; teaching materials [except apparatus]; adhesives [glues] for stationery or household purposes; sealing compounds for stationery purposes are dissimilar to all goods covered by the opponent's right.

The opponent refers to previous decision of the Office (05/08/2014, R 1403/2013-4, SERTEGO/SURTECO et al., §13) to support its arguments on the similarity between the opponent’s goods and the contested goods in Class 16. 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

In the case at hand the contested goods in Class 16 and the opponent’s general purpose industrial and construction adhesives in Class 1 and adhesive sealants for general purpose use and caulks in Class 17 belong to different market sectors and are – as such - of interest to different publics. In lack of evidence provided by the opponent we cannot assume that these goods are produced by the same undertakings. These goods are also sold thorough different distribution channels. Additionally, the purposes and methods of use of the compared goods are not the same and the goods are neither complementary, nor in competition. Therefore, the sole fact that the said goods may indeed share an adhesive functionality is not enough to conclude for similarity, because of the reasons indicated above. Hence, the contested goods in Class 16 are dissimilar to all the goods covered by the opponent's right.

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 to different degrees are directed at business customers with specific professional knowledge or expertise.

 

The degree of attention is considered to be higher than average given the specialised nature of the goods.

 

c) The signs

 

E6000
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 pronunciation of the differing letters ‘E’ and ‘F’ is similar in some of the European languages, for example in Polish and German, which contributes to the aural similarity between the signs in territories where these languages are spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish- and German-speaking part of the public, for which the likelihood of confusion might be higher.

The earlier mark is a word mark ‘E6000’. The Office follows the approach that single letters can have an independent conceptual meaning. The Court has confirmed this approach (08/05/2012, T-101/11, G, EU:T:2012:223, § 56; 21/03/2013, C-341/12 P, G, EU:C:2013:206, appeal dismissed). The concept of a figure is the number it identifies, unless it suggests another concept. As no indications of the parties were made in this regard, it has to be concluded that the earlier mark triggers the concepts of a letter ‘E’ and the number ‘6000’, which are both distinctive to an average degree in relation to the relevant goods.

The contested sign is a figurative mark comprising the letter ‘F’ followed by the numeral ‘6000’ depicted in a vertical position in a rather standard, black font. The rather standard stylisation of the contested sign will be perceived as purely decorative. As already explained above with regard to the concepts triggered by letters and numbers and once again taking into consideration that no indications have been made by the parties in this regard, the contested sign triggers the concepts of a letter ‘F’ and the number ‘6000’, which are both distinctive to an average degree in relation to the relevant goods.

Visually, the marks are similar to the extent that they both consist of five characters in length and coincide in the ending ‘6000’. They differ only in the rather standard stylisation of the contested sign and the first letters ‘E’ and ‘F’ of the signs, which are nevertheless visually very similar.

Considering the above, the signs are visually highly similar.

Aurally, the marks when pronounced have the same length, rhythm and intonation. They also fully coincide in the pronunciation of the number ‘6000’. They only differ in the pronunciation of the letters ‘E’ and ‘F’, which in Polish and German have a similar pronunciation anyhow, namely ‘e’ and ‘ef’ (in Polish) and ‘e:’ and ‘ef’ (in German).

Considering the above, the signs are aurally similar to at least an average degree.

Conceptually, the signs coincide in concepts triggered by their numerical components and differ in the concepts triggered by their first letters.

Therefore, the signs are conceptually similar to at least an average 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

 

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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.

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).

The goods are partially identical, partially similar to different degrees and partially dissimilar. The signs are visually highly similar and aurally and conceptually similar at least to an average degree. The degree of attention is higher than average. The distinctiveness of the earlier mark is normal.

The signs have the same length, both comprise of the same number ‘6000’ and similar letters ‘E’ and ‘F’. This results in striking similarities between the signs at a visual, aural and conceptual level. Therefore, even considering the higher than average degree of attention displayed by the relevant public, it is very likely that the public will attribute the same commercial origin to the goods manufactured by the opponent and the applicant. Indeed, the goods of the applicant are likely to be seen for example as belonging to a range of products newly developed by the opponent, also in consideration of the fact that ‘E’ and ‘F’ are subsequent letters in the alphabet. The differences between the signs are limited to their first letters ‘E’ and ‘F’ which are still visually and also aurally very similar for the public on which the present assessment focuses.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish- and German-speaking part of the public. 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 from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees to those of the earlier trade mark, even for those goods found to be similar only to a low degree. Indeed, applying the aforementioned principle of interdependence, it is considered that the similarities between the signs are sufficient to offset the low degree of similarity between some of the goods.

 

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Inés GARCIA LLEDO

Rosario GURRIERI

Cynthia DEN DEKKER

 

 

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.