OPPOSITION No B 2 396 680

"EKO Industrial And Commercial Petroleum Company A.E." also trading as "EKO ABEE", 8A Cheimarras street, 151 25 Marousi, Greece (opponent), represented by Law Firm Thanos Masoulas & Partners, Sina 11, 106-80 Athens, Greece (professional representative)

a g a i n s t

ERC Emissions-Reduzierungs-Concepte GmbH, Bäckerstr. 13, 21244 Buchholz, Germany (applicant), represented by KPMG Rechtsanwaltsgesellschaft mbH, Ludwig-Erhard-Straße 11-17, 20459 Hamburg, Germany (professional representative).

On XX/XX/XXXX, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 396 680 is upheld for all the contested goods.

2. European Union trade mark application No 12 391 124 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 391 124, which were limited on the 21/01/2015 according to the applicant’s request. The opposition is based on European Union trade mark registration No 1 661 933, Greek trade mark registration No 129 748, Cyprus trade mark registration No 64 694 and Cyprus trade mark registration No 64 697. The opponent invoked Article 8(1)(a), 8(1)(b) and Article 8(5) EUTMR in connexion to the European Union trade mark and the Greek trade mark registration.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 03/06/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union, Greece and Cyprus from 03/06/2009 to 02/06/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

European Union trade mark registration No 1 661 933

Class 1: Chemicals used in industry, science (excluding those to be used as or in dental materials or by dentists), and photography, as well as in agriculture, horticulture and forestry; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry, except ultra dispersed barite fillers.

Class 4: Industrial oils and greases (except edible oils and fats and essential oils); lubricants; (except lubricants manufactured with recuperated or re-refined oils); dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants.

Greek trade mark registration No 129 748

Class 1: Chemical products used in industry, science, photography, agriculture, horticulture and forestry; Manure (natural and artificial); Fire extinguishing compositions; Tempering substances and chemical preparations for soldering; Chemical substances for preserving foodstuffs; Tanning substances; Adhesive substances used in industry.

Class 4: Industrial oils and greases (other than edible oils and fats and essential oils); Lubricants; Dust laying and absorbing compositions; Fuels (including motor spirit) and illuminants.

Cyprus trade mark registration No 64 694

Class 1: Chemical products used in industry, science, photography, agriculture, horticulture and forestry; Manures (natural and artificial); Fire extinguishing compositions; Tempering substances and chemical preparations for soldering; Chemical substances for preserving foodstuffs; Tanning substances; adhesives substances used in industry.

Cyprus trade mark registration No 64 697

Class 4: Industrial oils and greases (other than edible oils and fats and essential oils); Lubricants; Dust laying and absorbing compositions; Fuels (including motor spirit) and illuminants.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 08/10/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/12/2015 to submit evidence of use of the earlier trade marks. This time limit was extended on 30/11/2015 until 13/02/2016. On 15/02/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, between others, the following:

• The opponent’s enterprise, EKO AVEE financial statements for the years 2010, 2009, 2012, 2011, 2014 and 2013. These documents are in Greek and, as the applicant claims, no translation was provided. Nevertheless, the company PricewaterhouseCoopers SA, acting as statutory auditors of the opponent, after having audited the above mentioned financial statements, confirmed that sales and advertising expenses resulted from trading activities of the company under its trademark and distinctive sign ‘EKO’.

• 30 Invoices for an approximate total of Euro 1.260.579 dated 2014 and directed to several places in Greece as well as to different places in Europe and others. The goods can be read to be lubricants and biodiesel, and are clearly related to the trade mark EKO. For 2013 the approximate amount of the invoices accede to Euro 124.867 distributed in 30 invoices to Greece for goods related to diesel, lubricants, brake fluid, and other chemicals used in the car industry. 2012: 30 invoices dated 2012 for a total approximate amount of Euro 129.447 in Greece. The opponent also submits invoices for the years 2011 for approximately Euro 323.625, not taking into account the non legible invoices. Between the invoices that the opponent filed for 2010 there are many illegible ones (of which the total amount can not be deduced). The same occurs with the invoices presented for the year 2009. Nevertheless, in all cases it is clear that the invoices are related to lubricants, gasoline and other fuels and fluids and chemicals used in the car industry, antifreeze, coolant, flow, ad blue and penetrating oil for products under the trade mark EKO.

• A company called ‘media services’, that dedicates to the research and measurement of the advertising and other appearances that are transmitted in the electronic, printed and outdoor media, submits a detailed marketing expenses document for the trade mark EKO in Greece between 2009 and 2014.

• Brand tracking studies dated 2010, 2011, 2012, 2013, performed in Greece, called ‘brand vitality tracking’ which includes different surveys performed by the Helenic Petroleum association about the awareness and usage of the different companies related to petrol products. It can be seen that EKO users are the second in expressing confidence for this brand which awareness is very high in relation to refuelling private cars and it comes first in cases of company cars (study of 2011).

• Catalogue 2015, for lubricants. Although the catalogue is in Greek, form the photographs and some details in English it is clear what the goods are. Also, these catalogues help to understand the products as appeared in the invoices. The mark EKO can also clearly be seen on the products. There are more goods in the catalogues such as brake fluids liquids, antifreeze fluids, fluids for cooling the engines, ad blue liquids, screen wash liquids, oil sprays, and greases.

• Sworn declaration, signed by the lubricants director dated 01/2016, confirming that the prices made effective as of 03/03/2015 are still valid and therefore the prices of the catalogue are updated.

• Advertisements in which the trade mark EKO can be seen in relation to goods related to transport and fuels. Again, it is clear for the pictures and the photographs for which goods it is about. From this evidence we can deduct that the company also sells petrol for home hitting.

• Superbrands Awards of the EKO trade mark dated 2012 and nominated as top company brand name.

• More invoices for Cyprus dated between 2009 and 2014.

• Pricelists dated 2014 of the trade mark EKO related to all sort of products of classes 1 and 4. This document has a part in the description of the characteristic of the products that is in English.

• Advertisement in newspapers and magazines in Cyprus between 2009 and 2014. Most of these documents are in Greek. Nevertheless the dated and the trade mark EKO can be clearly seen in relation to petrol stations (there are several photographs) and tank tracks. And, as the applicant says in its observations in reply to the opponent’s submissions for proof of use, there is one announcement about EKO participating in an annual charity bazaar and the support of Bank of Cyprus.

• A brand vitality survey for Cyprus dated 2011 (in comparison with 2008) and performed by GFK Hellas. It is clear that EKO is the first company in distribution of fuel company users.

• Other proof of use for Bulgaria. Photos of petrol stations, best petrol chain of the year 2015 awards, more invoices etcetera.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, invoices and catalogues, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices, catalogues, surveys, pricelists, show that the place of use is Greece, Cyprus and Bulgaria. This can be inferred from the language of the documents, which is in Greek, Bulgarian and English and some addresses in Greece, Cyprus and Bulgaria. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period.

The documents filed, namely ‘invoices and catalogues’, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used as registered for all the goods for which the mark is registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of European Union trade mark registration No 1 661 933, Greek trade mark registration No 129 748, Cyprus trade mark registration No 64 694 and Cyprus trade mark registration No 64 697 for the following goods:

Class 1: Chemical products used in industry.

Class 4: Industrial oils and greases (other than edible oils and fats and essential oils); Lubricants; Dust laying and absorbing compositions; Fuels (including motor spirit) and illuminants.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 European Union trade mark registration No 129 748.

1. The goods

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

Class 1: Chemicals used in industry.

Class 4: Industrial oils and greases (except edible oils and fats and essential oils); lubricants; (except lubricants manufactured with recuperated or re-refined oils); dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants.

The contested goods are the following:

Class 1: Fuel additives (Chemical -).

Class 4: Fuels; Gasoline; Diesel; Non-chemical additives for fuels and motor fuels, all being other than solid fuels, briquettes, charcoal and/or liquid gas for lighters.

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 fuel additives (Chemical -) are included in the broad category of the opponent’s chemical products used in industry. Therefore, they are identical.

Contested goods in Class 4

Fuels are identically contained in both lists of goods.

The contested gasoline; diesel; motor fuels, all being other than solid fuels, briquettes, charcoal and/or liquid gas for lighters are included in the broad category of the opponent’s fuels. Therefore, they are identical.

The contested non-chemical additives for fuels, all being other than solid fuels, briquettes, charcoal and/or liquid gas for lighters are similar to the opponent’s fuels. This is because, they are complementary goods that have the same distribution channels, relevant public and producers.

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 or services in question.

In the present case, the goods found to be identical are directed, at the public at large for the goods used normally every day, such as fuels and at business customers with specific professional knowledge or expertise, as they are used in industrial processes, for the more specialised goods such as the chemical products used in industry. The degree of attention may vary from average to high.

3. The signs

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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the letters EKO in blue standard capital letters, underlined with a red thick line. On top of it there is a red square with a white design that resembles to a Greek letter E.

The contested sign is a figurative mark consisting of the letters ‘eco’ written in slightly stylised lower case letters. From inside the letter o there is a flame coming out. Under the above, there is written ‘protection and power’ in smaller standard lower case characters.

Despite the figurative element of the contested mark, namely the flame, which is not distinctive for fuels and flammable materials, the signs have no elements that could be considered more distinctive than other elements. Despite the applicant’s claim, in concrete that the verbal elements of the signs EKO/eco are descriptive, in Greek these elements have no meaning being the Greek word for ecological οικολογικό.

The element ‘eco’ and the flame coming out from the letter ‘O’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in ‘E*O’. However, they differ in ‘K versus c’ placed at the same position, the expression ‘protection and power’ and the figurative elements of both signs and the colours in the earlier sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛EKO/eco’, present in an identical order. The pronunciation differs in the sound of the letters ‛protection and power’ of the contested mark, which have no counterparts in the earlier mark. Taking into account that the signs are pronounced in an identical way in their distinctive elements which is also the dominant element of the contested mark, they are considered to be aurally highly similar.

Conceptually, while the public in the relevant territory will perceive the flame in the contested mark as such, the other sign lacks any meaning in that territory since the verbal elements cannot be understood. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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 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

The goods are partly identical and partly similar, and they are directed, also at the public at large with a degree of attention that varies from average to high.

The comparison of the signs has shown that the marks are visually similar to a low degree and aurally similar to a high degree. It is true that the contested mark is visually and also phonetically larger than the earlier trade mark, as the latter is a word combination while the former is a single word mark. However, the contested mark coincides aurally to a high degree with the earlier mark to its distinctive element. It is likely that at least part of the consumers will not read the element ‛protection and power’ written in smaller letters underneath the dominant element eco.

As regards the colour graphic representation of the signs, the Office notes that it is generally acknowledged that the verbal component of a mark is of more importance when analysing the sign as a whole. The average consumer focuses to the predominant word element of the sign, which enables him to make the same choice on the occasion of a subsequent purchase, while the colour and typeface can be perceived as decorative features and not as the most important elements indicating the origin of the goods.

In the case at hand, if the marks are communicated orally consumers will not be able to distinguish them. Then, the visual differences are not enough to exclude any likelihood of confusion between the marks.

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).

Considering all the above, there is a likelihood of confusion on the part of the Greek-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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 129 748. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right ‘EKO’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) and Article 8 (5) EUTMR.

COSTS

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 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Martin EBERL

Anna POLITI

Judit NÉMETH

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.