OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 486 937
Donau Kanol GmbH & Co KG, Grossemdorf 65, 4551 Ried im Traunkreis, Austria (opponent), represented by Christopher Straberger, Maria-Theresia-Str. 19, 4600 Wels Austria (professional representative)
a g a i n s t
The Premiere Polish Company Limited, Oakley Gardens, Bouncers Lane, Prestbury, Cheltenham Gloucestershire GL52 5JD, The United Kingdom (applicant), represented by Wynne-Jones Laine & James LLP, Essex Place 22 Rodney Road, Cheltenham, Gloucestershire GL50 1JJ, The United Kingdom (professional representative).
On 18/12/2015, the Opposition Division takes the following
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of Community trade
mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical use; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
The contested goods are the following:
Class 3: Preparations and substances all for laundry use; cleaning, polishing, scouring, descaling, and abrasive preparations; soaps, hand washes and sanitisors; paint or polish stripping preparations and substances; antistatic preparations and substances; and rinse additives.
Class 5: Disinfectants and disinfectant washes; hand sanitisors.
As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 3
The contested preparations and substances all for laundry use; cleaning, polishing, scouring, descaling, and abrasive preparations; soaps are identically contained in both lists of goods (including synonyms).
The contested antistatic preparations and substances; rinse additives are included in the broader category of the opponent’s bleaching preparations and other substances for laundry use. Therefore, they are considered identical.
The contested hand washes and sanitisors are similar to the opponent’s soaps as they have the same purpose. They can coincide in producer, end user and distribution channels.
The contested paint or polish stripping preparations and substances are similar to the opponent’s abrasive preparations as they can coincide in producer, end user and distribution channels.
Contested goods in Class 5
The contested disinfectants are identically contained in both lists of goods (including synonyms).
The contested disinfectant washes; hand sanitisors are included in the broader category of the opponent’s disinfectants. Therefore, they are considered identical.
Earlier trade mark
The relevant territory is the European Union.
Both marks are figurative marks. The earlier mark is a figurative mark that shows a green rectangle on which appear in yellow the verbal elements ‘ECO’ and ‘FORTE’, written in two lines and upper case, and a stylized flower arranged on their upper right side. The letter ‘O’ of the term ‘ECO’ forms the disk of the flower design and the element ‘FORTE’ is underlined.
The contested mark consists of a verbal element ‘ecoforce’ written in lower-case letters. The beginning of the sign, the word ‘eco’ is written in green, stylised font and the letter ‘o’ is formed by two green arrows. The latter part ‘force’ is written in close to standard black font.
Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘ECOFOR*E’ and in the fact that in both signs the figurative element participates or is used to represent the letters ‘O’. However, they differ in their figurative elements being the flower in the earlier mark and two arrows in the contested sign. Moreover, they differ in their fonts, the colour of the background and the fact that the earlier sign is written in two lines.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in sound of the letters ‛ECOFOR*E’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letter ‛T’ of the earlier sign and and in the sound of the letters ‘C’ of the contested sign.
Conceptually, neither ‘ECOFORCE’ nor ‘ECO FORTE’ considered as a whole have a meaning in any of the languages of the European Union. For consumers who recognize ‘ECO’ as the short form of ‘ecological’ or ‘economical’ the signs are to that extent conceptually similar.
Also, the figurative element in the earlier sign will be perceived as a flower and the figurative element of the contested sign may be perceived as a symbol of recycling and therefore they can be both understood as alluding to ecology and reinforcing the concept of the element ‘ECO’.
The same applies to the English or French or Italian speaking public that perceives the elements ‘FORCE’ and ‘FORTE’ as relating to physical strength or a strong point.
In relation to consumers who perceive the marks at issue as fanciful terms the conceptual comparison remains neutral.
Taking into account the abovementioned visual, aural and for part of the relevant public also conceptual coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
For those who perceive the signs as referring to ‘ecological’ or ‘economical’, and bearing in mind that this can be seen as a reference to a desirable quality in the relevant goods, the signs are therefore weak as far as the respective word element ‘ECO’ is concerned. For those who perceive the elements ‘FORCE’ and ‘FORTE’ in the signs as referring to ‘physical strength’ or ‘a skill, ability, a strength’, and again as this can be seen as a reference to a desirable quality in the relevant goods, the signs are therefore also weak as far as the respective word elements are concerned.
For those who do not understand any meaning within the marks, the marks under comparison have no elements which could be considered clearly more distinctive in comparison to other elements.
As regards both signs, it should be noted that the figurative elements respectively representing a flower and a recycling symbol are carrying an ecological message reinforcing the meaning of common element ECO. Consequently, the additional figurative elements have only a limited impact when assessing the likelihood of confusion between the marks.
It should be noted that, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered to have a stronger impact than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see judgment of 14/07/2005, T-312/03, ‘SELENIUM-ACE’, paragraph 37). In the case at hand, at least for consumers who do not understand any meaning within the earlier mark, it is reasonable to assume that he will perceive the figurative element of the earlier mark, as a purely decorative element. Consequently, the additional figurative element has only a limited impact when assessing the likelihood of confusion between the marks.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) in comparison to other elements.
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, for part of the public the mark is composed of different non-distinctive or weak elements. Nevertheless, their combination makes the earlier trade mark distinctive.
In relation to consumers who perceive the marks at issue as fanciful terms, the earlier trade mark as a whole has no meaning in relation to the goods at hand from the perspective of the public in the relevant territory.
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 case at hand, the goods are directed at the public at large with an average attentiveness.
Global assessment, other arguments and conclusion
The goods have been found to be partly identical and partly similar and taking into consideration that the marks are, in particular, very similar from an aural point of view, and show also some visual and conceptual similarities, the Opposition Division concludes that there is a likelihood of confusion.
The earlier mark possesses a normal degree of inherent distinctiveness as a whole. Even for consumers who understand ‘ECO’ as referring to ‘ecological, economical’ and ‘FORTE’ as relating to strength the combination as a whole does not convey a clear meaning in relation to the protected goods. This was confirmed in the decision of the Fourth Board of Appeal (Decision of 08/07/2012, R 851/2011-4, ECOFORTE/ECO FORTE, paragraph 22) which in turn was confirmed by the General Court (judgement of 06/12/2013, T-361/12).
Taking into account the average distinctiveness of the earlier mark, the low visual and the high phonetic similarity as well as the conceptual similarity in relation to the public in some of the Member States of the European Union, there exists a likelihood of confusion for the identical and similar goods.
In the case of complex marks usually the verbal elements will be considered more distinctive than the figurative elements, because the average consumer will more easily refer to the goods or services in question by quoting their name than by describing the figurative elements of the trade mark (judgments of 14/07 2005, T-312/03, ‘Selenium-Ace’, paragraph 37; and of 5/10/2011, T-118/09, ‘Bloomclothes’, paragraph 34). In addition, the floral element will be perceived by the relevant public as being essentially decorative and not as identifying a particular commercial origin (judgment of 15/02/ 2011, T-213/09, ‘Yorma’s’, paragraph 79).
Considering all the above, the Opposition Division concludes that there is a likelihood of confusion at least for the consumers who do not understand any meaning within the marks and therefore the opposition is well founded on the basis of the opponent’s Community trade mark registration. It follows that the contested trade mark must be rejected.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3), (6) and (7)(d)(i) CTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Isabel DE ALFONSETI HARTMANN
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.