OPPOSITION No B 2 538 885

Minera Kraftstoffe Mineraloelwerk Rempel GmbH, Rehnaniastraße 130-132, 68219 Mannheim, Germany (opponent), represented by Keil & Schaafhausen Patent- und Rechtsanwälte PartGmbB, Friedrichstraße 2-6, 60323 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Aknel Group a.s., Strkovská 1, 39111 Planá nad Lužnicí, Czech Republic (applicant), represented by Patentcentrum Sedlák & Partners S.R.O., Husova 5, 370 01 České Budějovice, Czech Republic (professional representative).

On 10/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 538 885 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 723 812, namely against all the goods in Classes 1, 2 and 4. The opposition is based on German trade mark registration No 30 247 486. The opponent invoked Article 8(1)(b) EUTMR.

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.

1. The goods and services

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

Class 1: Chemicals used in industry, chemical additives for the oil industry (included in Class 1), brake fluids, hydraulic fluids.

Class 2: Anti-corrosive preparations, anti-rust preparations for preservation.

Class 4: Industrial oils and greases, lubricants, motor oils, fuel oils, heat transmission oils, oil binding agents; fuels (including motor spirit), lighting fuels; non-chemical additives for the oil industry, namely for motor fuels and liquid fuels (included in Class 4).

Class 37: Filling stations and motor vehicle service stations, namely vehicle services (repair, upkeep, maintenance, cleaning, preservation, repair of tires and tire change); disposal of mineral oil products by tank cleaning.

Class 39: Storage, transport and distribution of mineral oil products for third parties, especially of motor fuels and liquid fuels like fuel oil; disposal of mineral oil products by evacuation; filling stations and motor vehicle service stations, namely vehicle towing and transport.

The contested goods are the following:

Class 1: Coolant liquids and emulsions for machining of metals; chemical fluids for metal working; chemical additives to refrigerants, oils and lubricants; degreasing preparations for use in manufacturing processes.

Class 2: Preservatives against rust; water-based and non-water-based anti-corrosion preparations; rust preventive substances for application to metal surfaces.

Class 4: Industrial oil and grease; industrial oils for machining, abrading, forming, stamping and drawing of metal; cutting fluids and emulsions for machining; non-chemical additives to refrigerants, oils and lubricants.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 coolant liquids and emulsions for machining of metals; chemical fluids for metal working; degreasing preparations for use in manufacturing processes are included in the broad category of the opponent’s chemicals used in industry. Therefore, they are identical.

The contested chemical additives to refrigerants, oils and lubricants are included in the broad category of the opponent’s chemicals used in industry. Therefore, they are identical.

Contested goods in Class 2

The contested preservatives against rust are identically contained in the opponent’s list of goods and services (including synonyms).

The contested water-based and non-water-based anti-corrosion preparations are included in the broad category of the opponent’s anti-corrosive preparations. Therefore, they are identical.

The contested rust preventive substances for application to metal surfaces are included in the broad category of the opponent’s anti-rust preparations for preservation. Therefore, they are identical.

Contested goods in Class 4

The contested industrial oil and grease is identically contained in the opponent’s list of goods and services.

The contested industrial oils for machining, abrading, forming, stamping and drawing of metal are included in the broad category of the opponent’s industrial oils. Therefore, they are identical.

The contested cutting fluids and emulsions for machining are included in the broad category of the opponent’s lubricants. Therefore, they are identical.

The contested non-chemical additives to refrigerants, oils and lubricants are substances of non-chemical origin that are added to another chemical product to improve its performance. The same definition applies to the opponent’s non-chemical additives for the oil industry, namely for motor fuels and liquid fuels (included in Class 4). Therefore, they have in common the nature of being additives, even if they have different uses. They coincide in end users and in distribution channels. They can be manufactured by the same companies. Therefore, the contested non-chemical additives to refrigerants, oils and lubricants are highly similar to the opponent’s non-chemical additives for the oil industry, namely for motor fuels and liquid fuels (included in Class 4).

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 or highly similar are directed, on the one hand, at the public at large for the goods used normally, such as preservatives against rust. On the other hand, other goods at issue, which are specialised, for example cutting fluids and emulsions for machining, are directed at business customers with specific professional knowledge or expertise, as they are used in industrial processes. The degree of attention may vary from average to high.

3. The signs

	MINUO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is a figurative mark, consisting of the verbal element ‘minera’ in lower case letters with a simple stylisation. This stylisation is a curved line, starting at the letter ‘I’, that reaches the end of the word, next to the letter ‘a’. The verbal element ‘minera’ is more distinctive than the figurative element, which is purely decorative.

The contested sign is a word mark, ‘MINUO’. This word does not have any meaning related to the relevant goods.

Neither of the signs has any element that is more dominant than other elements.

Visually, the signs coincide only in the first three letters, ‘MIN’. However, they differ in their depiction, in the final letters, ‘ERA’ in the earlier mark and ‘UO’ in the contested sign, and in the figurative element of the earlier mark.

Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MIN’, present identically in both signs. However, the pronunciation differs significantly in the sound of the letters ‛ERA’ of the earlier mark and ‘UO’ of the contested sign. The sequences of vowels are clearly different and so are the lengths, rhythms and intonations.

Therefore, the signs are similar to a low degree.

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.

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.

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 and services 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

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’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

The goods are partly identical and partly highly similar. The degree of attention varies from average to high. The marks are visually and aurally similar only to a low degree. Although the marks begin with the same three letters, the other parts of the marks are completely different, from both the aural and the visual aspect. The Opposition Division finds no reason whatsoever for the consumer to associate the signs because they start with the same three letters. Indeed, the general composition of the words at issue creates visual and aural impressions that are so different, due to the different lengths, the different endings, the different numbers of syllables and the effect of all the foregoing on the rhythm, sonority and pronunciation of the words, that, in the Opposition Division’s opinion, it is unlikely that such an association would occur.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Begoña URIARTE VALIENTE

Alexandra APOSTOLAKIS

Pedro JURADO MONTEJANO

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.