OPPOSITION No B 2 336 256

Evonik Degussa GmbH, Rellinghauser Str. 1-11, 45128 Essen, Germany (opponent), represented by Zenz Patentanwälte Partnerschaft MBB, Rüttenscheider Str. 2, 45128 Essen, Germany (professional representative)

a g a i n s t

CVC Specialty Chemicals, Inc., 844 N, Lenola Road, Moorestown New Jersey 08057, United States of America (applicant), represented by Mehler Achler Patentanwälte, Bahnhofstr. 67, 65185 Wiesbaden, Germany (professional representative).

On 19/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 336 256 is upheld for all the contested goods.

2. Community trade mark application No 12 406 922 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 Community trade mark application No 12 406 922. The opposition is based on Community trade mark registration No 2 147 718. The opponent invoked Article 8(1)(b) CTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, 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 earlier Community trade mark No 2 147 718 for part of the goods and services, namely “regarding all goods and services of Community trademark ‘HYPROX’ except ‘hydrogen peroxide’”.

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

The contested application was published on 13/01/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 13/01/2009 to 12/01/2014 inclusive.

On 21/11/2014, according to Rule 22(2) CTMIR, the Office gave the opponent until 26/01/2015 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended until 26/03/2015. Furthermore, contrary to what was stated in the notification of the Office to the opponent on 21/11/2014 and in conformity with the applicant’s request, the evidence must show use of the trade mark only for part of the goods and services on which the opposition is based, namely all the goods covered under the earlier trade mark except hydrogen peroxide.

According to Rule 22(3) CTMIR, 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 26/03/2015, within the time limit, the opponent submitted evidence of use. In response and in addition to its initial request, the applicant requested on 03/06/2015 that the opponent submit proof of use of earlier Community trade mark No 2 147 718 for the goods not covered under its initial request, namely for hydrogen peroxide. In this respect, it should be noted that according to Rule 22(1) CTMIR, a request for proof of use pursuant to Article 42(2) or (3) CTMR shall be admissible only if the applicant submits such a request within the period set by the Office for the applicant to file its observations in reply to the notice of opposition and to all the supporting facts, evidence and arguments submitted by the opponent. In the present case, the Office invited the applicant on 25/04/2014, to submit its observations in reply to the opposition. The time limit to do so expired on 31/10/2014. As mentioned above, the applicant’s request for proof of use in relation to hydrogen peroxide was submitted on 03/06/2015, which is after the expiry of the time limit. Therefore, the request for proof of use in relation to hydrogen peroxide is not admissible pursuant to Rule 22(1) CTMIR.

In view of the foregoing, and for reasons of procedural economy, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s goods not subject to proof of use, namely hydrogen peroxide.

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.

1. The goods

As mentioned above, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s goods not subject to proof of use. Therefore, the goods on which the opposition is based are the following:

Class 1: Hydrogen peroxide

The contested goods are the following:

Class 1: Elastomer modified epoxy resins.

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

Elastomer modified epoxy resins are basic materials used to produce adhesives, sealants, laminates and composites. Hydrogen peroxide is used to a great extent as an oxidation agent, in particular for epoxidation. Apart from the fact that the opponent’s hydrogen peroxide is used in the synthesis of many epoxy resins such as the applicant’s, all the goods at issue are used in the production of polymers. All are chemicals that are or can be used as basic materials, precursors or raw materials, in the chemical industry specialised in polymers. Therefore, the goods at issue are similar in purpose and can be produced by the same companies and are sold through the same distribution channels to the same public (industry). In view of the foregoing, it must be concluded that the goods at issue are similar.

2. The signs

HYPROX	HYPOX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the verbal sequence ‘HYP(*)OX’. They only differ in the additional letter ‘R’ placed in fourth position in the earlier mark which has no counterpart in the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters
/H-Y-P-(*)-O-X/, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letter ‛R’ of the earlier mark, which has no counterpart in the contested sign.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. 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.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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.

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

5. 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 are directed at the public at large. The goods at issue are specialised goods directed at business customers with specific professional knowledge or expertise. Taking into account the highly specialised nature of the relevant goods, it is considered that the degree of attention is higher than average.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.).

The goods at issue are similar. The earlier mark is distinctive to a normal degree and the signs at issue are visually and aurally similar to the extent that they have five letters/sounds in common, namely ‘HYP(*)OX’ out of a total of six in the earlier mark which contains the additional letter ‘R’ in fourth position.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the identical first letters of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Moreover, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’). The foregoing is equally true for goods which attract a heightened level of attention and all the more when signs do not convey any meaning as in the present case.

In view of the foregoing, the Opposition Division is of the opinion that the difference found between the earlier mark and the contested sign, residing in one single additional letter ‘R’ in the earlier mark, is not sufficient to counteract their significant similarities.

Considering all the above and despite a heightened level of attention on the part of the relevant public, there is a likelihood of confusion on the part of said public.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 2 147 718 insofar as it is based on hydrogen peroxide in Class 1. Therefore, it is unnecessary to examine the evidence of use filed by the opponent with regard to the remaining goods on which the opposition is based. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

Begoña URIARTE VALIENTE

Martina GALLE

Alexandra APOSTOLAKIS

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.