OPPOSITION No B 2 908 468

Belgin Madeni Yaglar Ticaret ve Sanayi Anonim Sirketi, Gebze Organize Sanayi Bolgesi, İhsandede Cad. No:125, GebzeKocaeli, Turkey (opponent), represented by Zivko Mijatovic & Partners, Avenida Fotógrafo Francisco Cano 91A, 03540, Alicante, Spain (professional representative)

a g a i n s t

Lubricant Export Company S.L., C/. Forners nº4, 46530, Puzol – Valencia, Spain (applicant), represented by J. Lopez Patentes Y Marcas S.L., C/. San Vicente, nº83‑3‑17, 46007, Valencia, Spain (professional representative).

On 12/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 908 468 is upheld for all the contested goods and services, namely:

Class 4: Industrial oils and greases, lubricants; lubricants and industrial greases, waxes and fluids; fuel; fuel mixtures; combustible products; fuel oil.

Class 35: Wholesaling and retailing in shops and via global computer networks of industrial oils and greases, lubricants and fluids, industrial waxes and greases, fuels, fuel mixtures, combustible products and combustible oils.

2. European Union trade mark application No 16 439 705 is rejected for all the contested goods and services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

Pursuant a limitation of the extent of the opposition filed by the opponent on 20/10/2017, the opposition is currently against some of the goods and services of European Union trade mark application No 16 439 705 namely against all the goods in Class 4 and some of the services in Class 35. The opposition is based on the international trade mark registration No 871 959 designating Bulgaria, Germany, Greece, Croatia, Italy, Poland, Romania, Slovenia for the word mark ‘LUBEX’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based namely the international trade mark registration No 871 959 designating Bulgaria, Romania, Italy, Poland, Croatia, Greece, Germany, and Slovenia.

In the present case, the date of filing of the contested trade mark is 07/03/2017.

Earlier trade mark No 871 959 is an international registration designating the individual Member States of Bulgaria, Romania, Italy, Poland, Croatia, Greece, Germany, and Slovenia. Each Member State has either a 12- or 18-month deadline to issue a provisional refusal under the Madrid Protocol. Where a provisional refusal is issued within this deadline, the date that will be decisive in determining whether the mark is subject to the proof of use obligation is the date when the proceedings leading to the provisional refusal are concluded, namely when the Statement of Grant of Protection is issued. Additionally, where a provisional refusal has not been issued, but a Statement of Grant of Protection is issued prior to the expiry of the 12- or 18-month deadline, this will be the decisive date.

For the subsequent designation of Bulgaria, the Statement of Grant of Protection was published by WIPO on 27/11/2014. It can be inferred from this date that the earlier mark had not been protected for at least five years on the relevant date. Therefore, the request for proof of use is inadmissible as far as Bulgaria is concerned.

For reasons of procedural economy, the Opposition Division will not assess the admissibility of the proof of use request as far as the other Member States (i.e. Romania, Italy, Poland, Croatia, Greece, Germany, and Slovenia) are concerned and will proceed with the evaluation of likelihood of confusion on the basis of the Bulgarian designation of the earlier international trade mark registration No 871 959, for which the request of use is inadmissible.

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.

a) The goods and services

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

Class 1: Chemical additive materials for fuel (including motor fuel), brake fluid, antifreeze, synthetic protective materials for motors, cooling substances for motors.

Class 4: Industrial oils and industrial greases, lubricants, machine motor oils, greases, cutting fluids, dust absorbing and binding materials, solid fuel; coals, coal briquettes, coke, lignite, wood, wood coal, artificial coal; fluid and gas fuels with their additives including the vehicle fuels, fluid and gas fuels, benzine, diesel oil, fuel oil, kerosene, non-chemical motor fuel additives; candles for lighting purposes, wicks, waxes, paraffins.

Following a limitation of the extent of the opposition filed by the opponent on 20/1072017, the contested goods and services are the following:

Class 4: Industrial oils and greases, lubricants; lubricants and industrial greases, waxes and fluids; fuel; fuel mixtures; combustible products; fuel oil.

Class 35: Wholesaling and retailing in shops and via global computer networks of industrial oils and greases, lubricants and fluids, industrial waxes and greases, fuels, fuel mixtures, combustible products and combustible oils.

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 and greases, lubricants; lubricants and industrial greases, waxes; fuel oil are identically contained in both lists of goods (including synonyms).

The contested fluids include, as broader category the opponent’s cutting fluids. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested fuel; combustible products include, as broader category the opponent’s solid fuel. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested fuel mixtures overlaps with the opponent’s solid fuel. Therefore, are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/05/2015, T‑715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they target the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find similarity, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

Taking the above principles into account it follows that the contested wholesaling and retailing in shops and via global computer networks of industrial oils and greases, lubricants and fluids, industrial waxes and greases, fuels, fuel mixtures, combustible products and combustible oils are similar to a low degree with the opponent’s industrial oils and industrial greases, lubricants, cutting fluids, waxes, benzine, diesel oil.

b) 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 and services found to be identical or similar to a low degree are directed at the public at large as well as business customers with specific professional knowledge or expertise in the field of oil, industrial fluids and fuels.

The degree of attention is considered to be average.

c) The signs

LUBEX
Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 verbal element ‘LUBEX’ of the earlier trade mark and ‘LX LUBEXCO’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The verbal element ‘LX’ and the depiction of two blue and grey stylised drops in the contested sign are the dominant element and the most eye-catching.

However, as far as the contested sign graphical element portraying two stylised drops is concerned, when signs are both verbal and figurative components, 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 elements than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

On a final basis, in the assessment of the visual and aural similarity of the marks in question, it has to be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the sequence of letters ‘LUBEX’. However, they differ in the final letters ‘CO’ of the contested sign’s word ‘LUBEXCO’, in the letters ‘LX’ and in its graphical elements and stylization.

Therefore, also taking into account the above principles, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LUBEX’ present identically in both signs. The pronunciation differs in the sound of the final letters ‘CO’ of the contested sign’s word ‘LUBEXCO’ and in those of the letters ‘LX’.

Therefore, also taking into account the above principles, the signs are aurally similar to an above-average 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.

d) 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.

e) Global assessment, other arguments and conclusion

The likelihood of confusion on the part of the public depends, inter alia, 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 the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of these cases (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, similarity between the trade marks and the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed, observant and circumspect. However, 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.

The goods and services have been found identical and similar to a low degree. They target the general and professional public, whose degree of attention is considered average.

The signs are visually similar to an average degree while aurally similar to an above-average degree, insofar as the earlier trade mark is entirely reproduced within the first five letters of the contested trade mark element ‘LUBEXCO’. The signs differ in the dominant element ‘LX’ of the contested application. However, it cannot be excluded that the relevant public might perceive this element as the initial and final letters of the earlier trade mark ‘LUBEX’, thus making an association with the earlier mark. In the present case, it is indeed highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Taking all the above into account, the Opposition Division considers that the differences between the signs – notwithstanding being focused in the dominant element ‘LX’ and in less relevant graphical elements – are still not sufficient to outweigh the visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical goods are likely to think that they come from the same undertaking or economically linked undertakings.

As regards the goods and services that are similar to a low degree only, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and 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). The assessed visual and aural degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between the goods and services. Therefore, the opposition is successful, and the contested trade mark must also be rejected in relation to those services.

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

Therefore, the opposition is well founded on the basis of the opponent’s Bulgarian designation of the earlier international trade mark registration No 871 959. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 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 Bulgarian designation of the earlier international trade mark registration No 871 959 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the opposition insofar as the Romanian, Italian, Polish, Croatian, Greek, German, and Slovenian designations of international trade mark registration No 871 959 are concerned (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Riccardo RAPONI

Aldo BLASI

Michele M. BENEDETTI-ALOISI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.