OPPOSITION No B 2 453 036
Nanogate AG, Zum Schacht 3, 66287 Quierschied-Göttelborn, Germany (opponent), represented by Dompatent von Kreisler Selting Werner - Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)
a g a i n s t
Eigenmann & Veronelli Iberica S.L., Paseo Gracia 81, 08008 Barcelona, Spain (applicant), represented by J.D. Núñez Patentes y Marcas, S.L., Rambla de Cataluña 120, 08008 Barcelona, Spain (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
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 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 8 220 493.
The goods on which the opposition is based are the following:
Class 1: Inorganic coating material, being chemicals used in industry; resins (artificial resins), unprocessed; fire-extinguishing compositions and/or fire-inhibiting substances, in particular for the surface treatment and/or refining of finished and/or semi-finished products, and of materials; tempering and soldering preparations; except chemicals, namely release agents for use in the rubber processing, plastic processing and metalworking industries.
Class 2: Paints, varnishes, lacquers, colorants; preservatives against rust and against deterioration of wood; mordants; raw natural resins; metals in foil and powder form, included in class 2; all the aforesaid goods in particular, but not exclusively, for the surface treatment of finished and semi-finished products, in particular for generating antibacterial, non-stick and/or anti-tarnish properties and/or for protection against scratching, corrosion and/or contamination.
The contested goods are the following:
Class 1: Chemicals for the manufacture of paints; Chemical agents for manufacturing dyestuffs.
Class 2: Paints, varnishes, lacquers; Colorants; Colours, color pigments, Inorganic pigments, Organic pigments, Colourants, Basic dyes (cationic dyes), Dyes for manufacturing paints and Colorants for manufacturing printing inks.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’ used in the opponent’s list of goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).
However, the term ‘namely’, used in the opponent’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.
Contested goods in Class 1
The contested chemicals for the manufacture of paints; chemical agents for manufacturing dyestuffs include chemical components used in the process of manufacturing paints and dyestuffs such as for example resins (natural or synthetic) where they act as a binder. It follows that these goods include, as a broader category, the opponent’s resins (artificial resins), unprocessed. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested goods in Class 2
The contested paints, varnishes, lacquers; colorants are identically contained in both lists of goods.
The contested colourants and the opponent’s colorants are different spellings of the same word and therefore they are considered to be identical.
The contested colours, color pigments, inorganic pigments, organic pigments, basic dyes (cationic dyes), dyes for manufacturing paints and colorants for manufacturing printing inks are included in the broad category of the opponent’s colorants, since they all present a substance used to give something a particular colour. Therefore, the goods under comparison are considered to be identical.
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 both at the public at large (e.g. do-it-yourself enthusiasts) and at professionals with specific knowledge or expertise in the field of painting. The degree of attention is considered to vary from average to higher than average.
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).
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, since the signs’ verbal constituents are English terms (as is explained in detail below), the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the relevant public such as the Hungarian- and Bulgarian-speakers for whom the terms are meaningless.
Both marks under comparison are word marks written in a standard typeface. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.
The earlier trade mark, although being one word sign, is indeed composed of two verbal elements ‘perma’ and ‘Conduct’ clearly separated by the initial upper case letter ‘C’ of the latter whereas the contested sign comprises of one word ‘PERMA’.
The word ‘perma’ present in both signs will not be associated with any meaning by a significant part of the Hungarian- and Bulgarian-speaking consumers, since it refers to a Latin prefix indicating ‘a fixed state’ (Collins English Dictionary Online, on 19/07/2016) or to a short form of the word ‘permanent’ i.e. ‘existing or intended to exist for an indefinite period’ (Collins English Dictionary Online, on 19/07/2016). Furthermore, there is no equivalent of this expression in either language. Consequently, this term is distinctive to an average degree in relation to the goods in question.
Likewise, the word ‘Conduct’ as being English word meaning inter alia ‘behaviour’ (Collins English Dictionary Online, on 19/07/2016) has neither a meaning nor an equivalent in Hungarian and Bulgarian language and is therefore deemed to have an average degree of distinctiveness in relation to the goods at issue.
Visually, the signs coincide in their distinctive verbal element ‘perma’, which constitutes the entire contested sign and is also fully included at the beginning of the earlier trade mark. On the other hand, they differ in the term ‘Conduct’ present in the earlier trade mark.
In this regard it should be pointed out that in word signs the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).
In the light of the abovementioned considerations, it may be concluded that the conflicting signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘perma’, present identically at the beginning of both signs. However, they differ in the sound of the element ‘Conduct’ of the earlier mark.
Therefore, the signs under comparison are similar to an average degree from the aural point of view.
Conceptually, reference is made to the previous assertions regarding the meanings of the signs and their particular elements.
Since neither of the signs has a meaning for the majority of Hungarian- and Bulgarian-speaking part of the relevant public a conceptual comparison is not possible and from this reason 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 Hungarian- and Bulgarian-speaking part of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
As has been concluded above, the contested goods in Classes 1 and 2 were found to be identical to the goods covered by the earlier trade mark and they target the public at large as well as professionals with a degree of attention varying from average to higher than average. Furthermore, for the non-English speaking part of the relevant public such as the Hungarian and Bulgarian consumers the earlier trade mark is considered to enjoy a normal degree of distinctiveness in relation to the relevant goods.
The marks in dispute are visually and aurally similar to an average degree; a conceptual comparison is not possible in the present case. This visual and aural similarity of the signs is justified by the coincidence in their initial part ‘perma’ which in fact means that the contested sign is fully incorporated at the beginning of the earlier trade mark where it plays an independent and distinctive role. On the other hand the differences between the signs lie only in the additional element ‘Conduct’ of the earlier mark. However, as has been already mentioned in section c) of this decision, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark.
Taking into account the abovementioned similarities between the signs in question, the Opposition Division considers that such similarities might lead at least part of the relevant public to think that the contested goods come from the same or economically-linked undertakings.
In addition, account must be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Hungarian- and Bulgarian-speaking part of the relevant public and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 8 220 493. 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.
It follows from the above that the contested trade mark must be rejected for all the contested goods.
As the earlier right ‘permaConduct’ (European Union trade mark registration No 8 220 493) 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).
Furthermore, the fact that the applicant requested proof of use of the opponent’s trade marks No 7 294 631, No 7 294 671 and No 6 436 794 is irrelevant for the outcome of the opposition in the present case as it is fully successful on the basis of European Union trade mark registration No 8 220 493 which is not subject to the proof of use obligation.
Likewise, 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) EUTMR.
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
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.