OPPOSITION No B 2 214 958
Humex, S.A., Ctra. La Canonja, nave 4, 43110 La Canonja (Tarragona), Spain (opponent), represented by Olten Patentes y Marcas, C/Entença 332-334, 08029 Barcelona, Spain (professional representative)
a g a i n s t
Multisorb Technologies, Inc., 325 Harlem Road, Buffalo, New York 14224-1893, United States of America (applicant), represented by HGF Limited, 8th Floor, 140 London Wall, London EC2Y 5DN, United Kingdom (professional representative).
On 18/05/2017, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods
European Union trade mark application No
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 goods on which the opposition is based are the following:
Class 1: Chemical damp-proofing preparations.
The contested goods, after a limitation, are the following:
Class 1: Desiccants, namely, packets of molecular sieve for absorbing water vapor from the atmosphere, none being anhydrous solvents and none being air fresheners, disinfectants or perfume dispensers for rooms.
An interpretation of the wording of the applicant’s list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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.
The opponent’s chemical damp-proofing preparations are preparations that are used to prevent moisture from passing into interior spaces, beneath surfaces or into/beneath other materials. The contested desiccants, namely, packets of molecular sieve for absorbing water vapor from the atmosphere, none being anhydrous solvents and none being air fresheners, disinfectants or perfume dispensers for rooms are preparations that absorb water and are used to remove moisture that would normally degrade or even destroy products sensitive to moisture. The goods under comparison coincide in the general purpose of preventing products/surfaces from getting moist. Their producers can be the same specialised chemical companies and they coincide in distribution channels. It follows that the goods are similar.
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 similar target the public at large, as well as business customers with specific professional knowledge or expertise in preventing products/surfaces from getting moist. The public’s degree of attentiveness may vary from average to higher than average, depending on the price, specialised nature, or terms and conditions of the purchased goods.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
Earlier trade mark
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).
Both signs are word marks; the earlier one consists of the elements ‘HUMY-DRY’ and the contested one of the elements ‘HI-DRY’.
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The element ‘DRY’, present in both signs, will be understood by part of the relevant public, such as the English-speaking public, as having the meaning of ‘lacking moisture; not damp or wet’ (information extracted from ReversoDictionary at http://dictionary.reverso.net/english-definition/dry). It will be understood by this part of the public as referring to the purpose of the relevant goods, and therefore it is non-distinctive for this part of the public for the relevant goods.
However, for another part of the public, such as the Bulgarian-speaking public, it has no meaning and is distinctive. Therefore, the Opposition Division will first examine the opposition in relation to the Bulgarian-speaking part of the public, for which ‘DRY’ has no meaning and has a normal degree of distinctiveness.
For this part of the public, the marks’ differentiating elements, ‘HUMY’ and ‘HI’, have no meaning either. Furthermore, considering that both marks are word marks, they have no elements that are more distinctive or dominant than others. The hyphens in both signs will be perceived as such.
Visually and aurally, the signs coincide in the first letter (and sound), ‘H’, and the last three letters (and sounds), ‘DRY’. The signs also coincide visually in the hyphen. The signs differ in the sequence of letters (and sounds) ‘UMY’ of the earlier mark versus the second letter, ‘I’, of 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In the case at issue, the first elements of the signs under comparison (namely ‘HUMY’ in the earlier mark and ‘HI’ in the contested sign) are likely to be perceived as the beginnings of the signs, as they are clearly separated by a hyphen from the second elements, namely ‘DRY’. Therefore, the differences in the first elements, namely ‘HUMY’ in the earlier mark and ‘HI’ in the contested sign, are of material importance when assessing the likelihood of confusion between the signs.
The coincidence between the elements ‘HUMY’ and ‘HI’ of the signs is limited to only the first letter ‘H’. Moreover, the elements differ in their lengths, four letters versus two letters. These elements will also be split into two syllables (HU-MY) in the earlier mark versus only one syllable (HI) in the contested sign. In total, the earlier sign consists of three syllables (HU-MY-DRY) versus two syllables (HI-DRY) in the contested sign.
Furthermore, the consonant–vowel structure of the first elements of the signs is different, namely consonant–vowel–consonant–vowel in the element ‘HUMY’ in the earlier mark versus consonant–vowel in the element ‘HI’ of the contested sign. This gives the elements ‘HUMY’ and ‘HI’ different rhythms and intonations and leads to the signs under comparison having different rhythms and intonations.
Following from the above, the signs are visually and aurally similar to only a low degree.
Conceptually, neither of the signs has a meaning for the relevant part of the public. 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.
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 relevant part of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The contested goods were found to be similar to the opponent’s goods and the signs under comparison are visually and aurally similar to a low degree, due to their first letter, ‘H’, the hyphen and their ending, ‘DRY’. However, the differences in their first elements (namely ‘HUMY’ versus ‘HI’), as specified above, due to their different lengths, the differing letters and the different consonant–vowel structure, will be clearly noticeable to the relevant part of the public.
The abovementioned differences are enough to outweigh the similarities between the signs originating from the letters and hyphen that they have in common. Following from the above, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered to be reasonably well informed and reasonably observant and circumspect, might believe that the goods, found to be similar, come from the same undertaking or economically linked undertakings.
Furthermore, 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). However, the similarity between the goods under comparison is not enough to offset the low level of similarity found between the signs.
Considering all the above, there is no likelihood of confusion on the part of the Bulgarian-speaking part of the general public. The opposition is therefore rejected.
This absence of a likelihood of confusion even more so applies to the part of the public for which the element ‘DRY’ is non-distinctive. This is because, as a result of the non-distinctive character of that element, that part of the public will perceive the signs as even less similar.
The conclusion that there is no likelihood of confusion also applies to the professional part of the public, as this part of the public is less prone to confusion than the general one.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.