OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 417 510
Oest Holding GmbH, Georg-Oest-Straße 4, 72250 Freudenstadt, Germany (opponent), represented by BRP Renaud und Partner MBB, Königstr. 28, 70173 Stuttgart, Germany (professional representative)
a g a i n s t
ΕΛΕΥΘΕΡΙΟΣ ΤΖΕΡΕΜΕΣ, ΙΑΣΩΝΟΣ 6, 42100 ΤΡΙΚΑΛΑ, Greece (applicant), represented by Γεωργια Καρρα, Αγίου Γεωργίου 54, 15451 Νέο Ψυχικό Αττικής, Greece (professional representative).
On 28/10/2015, the Opposition Division takes the following
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 4: Deep drawing oils, deep drawing lubricating oils and extrusion agents for deep drawing, punching and extruding
The contested goods are the following:
Class 4: industrial oils; lubricants; greases.
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 4
The contested industrial oils are used for industrial purposes. They are oily substances, especially ones used for lubricating. These goods overlap with the opponent’s deep drawing lubricating oils. Both oily substances can be used for lubricating. Therefore, they are considered identical.
The contested lubricants are lubricating substances, such as oil. These goods overlap with the opponent’s deep drawing lubricating oils. Therefore, they are considered identical.
The contested greases are any thick oil, especially one used as a lubricant for machinery. These goods overlap with the opponent’s deep drawing lubricating oils. Therefore, they are considered identical.
Earlier trade mark
The relevant territory is the European Union.
Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘PLATIN’ and the following letters ‘O’ and ‘L’. However, they differ in the letter ‘I’ in the contested sign. Both signs also differ in their structure, one verbal element in the earlier mark versus two verbal elements 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 ‘P-L-A-T-I-N’ present identically in both signs and in their last syllables ‘OL/OIL‘ which are aurally very close, to that extent the signs are highly similar.
Conceptually, the public in the relevant territory, at least the English speaker, will perceive the element ‘OIL‘ of the contested mark as ‘substances usually derived from petroleum and used for lubrication’ (information extracted from Collins Dictionary on 26/10/2015 at http://www.collinsdictionary.com/dictionary/english/oil). Furthermore, a part of the relevant public can perceive the element ‘PLATIN-’ as the root of ‘platinum’, which means ‘ductile malleable silvery-white metallic element, very resistant to heat and chemicals’.
However, the earlier mark, as whole, lacks any meaning in the territory.
Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
Taking into account the abovementioned visual and aural 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.
The earlier mark has no element that could be clearly considered more distinctive that other elements.
As regards the contested sign, bearing in mind that the relevant goods are ‘industrial oils; lubricants; greases’, it is considered that the element ‘OIL’, at least for English-speakers, is non-distinctive for these goods. The part of the relevant public who understands the meaning of that element will not pay as much attention to this non‑distinctive element as to the other more distinctive elements of the mark. Consequently, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.
Even though a part of the relevant public will understand the element ‘PLATIN’ as the root of ‘Platinum’ and referring to something with high quality or value, this does not necessarily mean that the public in general has been exposed to a descriptive or laudatory usage of the element ‘PLATIN’ vis a vis the goods; nor has it been shown that the relevant public has become accustomed to the term in the specific market sector. Therefore, contrary to the applicant’s argument, the term ‘PLATIN’ is considered to have average distinctiveness.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than 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, 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.
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 and at professionals working in industrial sectors. Considering the nature of the goods in question, the degree of attention may vary from average to high.
Global assessment, other arguments and conclusion
The goods are identical. As stated above, the signs are visually similar and aurally highly similar.
The signs have been found to be similar to the extent that they share the letters ‘PLATIN-’, ‘O’ and ‘L’, constituting the earlier mark. The minor differences between the signs are the letter ‘I’ in the contested sign and the structure of the signs (one word in the earlier mark/ two words in the contested sign).
Consumers tend to remember the similarities rather than the dissimilarities between the signs. In addition, 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 (judgement of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’).
Based on the principle of imperfect recollection, as well as the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services and vice versa, given the identity between the goods in question, the Opposition Division finds that the differences are insufficient to outweigh the similarities between the signs.
The applicant stated that the opposition is based on Community trade mark registration No 008 677 734, instead of two other earlier trade marks belonging to the opponent, purely in order to avoid the obligation to prove genuine use. Whether or not this is the case the Opposition Division must examine the case only in respect of the earlier rights invoked by the opponent. It is irrelevant that the opponent might have invoked alternative earlier rights other than the one chosen. Consequently, under these circumstances, the applicant’s claims must be set aside.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the relevant public.
Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 008 677 734. It follows that the contested trade mark must be rejected for all the contested goods.
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
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.