OPPOSITION No B 3 048 119

Mag Group FZE, Jebel-Ali-Free Zone, Dubai, United Arab Emirates (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036, Barcelona, Spain (professional representative)

a g a i n s t

Samer Al Gaddah, Al Burj Street, building 400, shop No2, P.O. Box 311922, Dubai, United Arab Emirates (applicant), represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate Intelectuala S.R.L., str. 11 Iunie, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucuresti, Romania (professional representative).

On 14/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 119 is partially upheld, namely for the following contested goods:

Class 1: Chemicals for use in the automotive industry; Chemical preparations for filling of holes in vehicle bodies; Chemical preparations for filling of flaws in the repair of vehicle bodies; Chemical products for insertion into vehicle tyres to protect them; Chemical products for insertion into vehicle tyres to repair them; Chemical products for insertion into vehicle tyres to strengthen them; Chemical preparations for filling of dents in the repair of vehicle bodies; Machining coolants; Fillers for vehicle body and tyre repair; Rubber cement for repairing pneumatic tyres; Tyre sealing compounds; Tyre repair mastics.

Class 4: Automobile lubricants; Non-chemical additives for lubricants; Motor vehicle lubricants; Automotive greases; Grease for machines; Non-chemical additives for greases.

Class 12: Adhesive rubber patches for repairing tubes or tires.

2. European Union trade mark application No 17 513 615 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 513 615 , namely all the goods applied for in Classes 1, 4, 9 and 12. The opposition is based on European Union trade mark registration No 6 788 211 . 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

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

Class 1: Unprocessed artificial resins, unprocessed plastics, fire extinguishing compositions, tempering and soldering preparations, tanning substances, adhesives used in industry.

Class 4: Industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, candles, wicks.

The contested goods are the following:

Class 1: Chemicals for use in the automotive industry; Chemical preparations for filling of holes in vehicle bodies; Chemical preparations for filling of flaws in the repair of vehicle bodies; Chemical products for insertion into vehicle tyres to protect them; Chemical products for insertion into vehicle tyres to repair them; Chemical products for insertion into vehicle tyres to strengthen them; Chemical preparations for filling of dents in the repair of vehicle bodies; Machining coolants; Fillers for vehicle body and tyre repair; Rubber cement for repairing pneumatic tyres; Tyre sealing compounds; Tyre repair mastics.

Class 4: Automobile lubricants; Non-chemical additives for lubricants; Motor vehicle lubricants; Automotive greases; Grease for machines; Non-chemical additives for greases.

Class 9: Batteries for vehicles; Batteries for electric vehicles; Battery charging devices for motor vehicles.

Class 12: Tyres for motor vehicles; Covers for tyres; Adhesive rubber patches for repairing tubes or tires; Wheels and tyres, and continuous tracks for vehicles; Tyres for motor vehicles; Parts and fittings for vehicles.

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 machining coolants are included in the broad category of the earlier unprocessed artificial resins. Therefore, they are identical.

The contested chemical products for insertion into vehicle tyres to protect them; chemical products for insertion into vehicle tyres to repair them; chemical products for insertion into vehicle tyres to strengthen them; fillers for vehicle body and tyre repair; rubber cement for repairing pneumatic tyres; tyre sealing compounds; tyre repair mastics overlap with the opponent’s adhesives used in industry because the opponent’s adhesives are chemicals used in tyres repair. Therefore, they are identical.

The contested chemicals for use in the automotive industry; chemical preparations for filling of holes in vehicle bodies; chemical preparations for filling of flaws in the repair of vehicle bodies; chemical preparations for filling of dents in the repair of vehicle bodies overlap with the opponent’s tempering and soldering preparations because the opponent’s preparations are essentially chemicals that can be used in the automobile repair industry. Therefore, they are identical.

Contested goods in Class 4

The contested automobile lubricants; motor vehicle lubricants are included in the broad category of the earlier lubricants. Therefore, they are identical.

The contested non-chemical additives for lubricants; automotive greases; grease for machines; non-chemical additives for greases are included in the broad category of the earlier industrial oils and greases. Therefore, they are identical.

Contested goods in Class 9

The contested batteries for vehicles; batteries for electric vehicles; battery charging devices for motor vehicles are containers consisting of one or more cells, in which chemical energy is converted into electricity and used as a source of power. The opponent’s goods in Class 1 are chemical compositions and the opponent’s goods in Class 4 are industrial oils, fuels, lubricants and illuminants.

These contested goods have nothing in common with the opponent’s goods as described above. They have a different nature, intended purpose and method of use. Their producers, distribution channels and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Consequently, they are dissimilar.

Contested goods in Class 12

The contested adhesive rubber patches for repairing tubes or tires are usually adhesives pieces of cloth or other material used to mend or strengthen a torn or weak point. They are considered similar to the opponent’s adhesives used in industry as they have the same intended purpose and method of use. They can have the same producers and points of sale.

The contested tyres for motor vehicles; covers for tyres; wheels and tyres, and continuous tracks for vehicles; tyres for motor vehicles; parts and fittings for vehicles are spare parts of vehicles. These contested goods have nothing in common with the opponent’s goods as described above. They have a different nature, intended purpose and method of use. Their producers, distribution channels and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Consequently, they are dissimilar.

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 similar are specialised goods directed at business customers with specific professional knowledge or expertise and to some extend also at the public at large.

The impact on safety of goods covered by a trade mark may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41).

Therefore, the degree of attention will vary from average to high, considering the specific nature or the frequency of purchase for chemical goods for example.

3. The signs

Earlier trade mark	Contested sign

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 earlier mark is a figurative sign consisting of the word ‘MAG’ in standard black upper case typeface together with a figurative element also in black, representing a bust of a prancing horse with additional lines that is distinctive.

The contested sign is a figurative sign consisting of the word ‘MAG’ in fairly standard dark blue upper case typeface with the word ‘Lubricants’ in standard green sentence case letters set below.

The common element ‘MAG’ of the signs will be understood by Romanians as ‘wise man’. As it has no meaning in relation to the goods for the relevant public it is, distinctive. For the rest of the public it has no meaning and therefore it is distinctive.

The element ‘Lubricants’ of the contested sign will be understood as the English term for ‘a substance used for lubricating an engine or component, such as oil or grease’ (information extracted from Oxford English Dictionary online on 07/11/2018 at http://english.oxforddictionaries.com) by the relevant specialised and public at large. Bearing in mind that some of the relevant goods are lubricants and greases, this element is non-distinctive for this part of the goods. It is distinctive for the rest of the goods.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The element ‘MAG’ in the contested sign is the dominant element as it is the most eye-catching, due to its larger size and position.

When signs consist of both verbal and figurative components, in principle, 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 element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letter sequence ‘MAG’ which is distinctive. However, they differ in the additional figurative element of the earlier mark, which has less impact than the word, and in the contested sign, in the additional verbal element ‘Lubricants’, which is not distinctive for part of the goods, its stylisation and colouring.

Therefore, depending on the distinctiveness of ‘Lubricants’, the degree of visual similarity between the signs will vary from average to high.

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
‛M-A-G’, present identically in a distinctive element in both signs. The pronunciation differs in the sound of ‘Lubricants’, which is not distinctive for part of the goods, of the contested sign, which has no counterpart in the earlier mark.

Therefore, depending on the distinctiveness of ‘Lubricants’, the signs are aurally identical or similar to an average degree.

Conceptually, depending on the distinctiveness of ‘Lubricants’, the signs are conceptually similar to an average degree where ‘MAG’ is understood and distinctive, and where ‘MAG’ is not understood, or , the signs are conceptual not similar, either because only the earlier mark is associated with the concept of the horse or because the marks are associated with a dissimilar meaning (i.e. the horse in the earlier mark and lubricants in the contested sign.

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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between 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 goods are partly identical or similar and partly dissimilar, and target business customers also the public at large, which will have an average to high degree of attention. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs are similar to the extent that they coincide in the letter sequence ‘MAG’, the only verbal element of the earlier mark, and an independent element of the contested sign. Furthermore, this coinciding element is distinctive in both signs.

There is a likelihood of confusion because the differences between the signs are confined to non‑distinctive or secondary elements and aspects.

Account is 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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Oana-Alina STURZA

Loreto URRACA LUQUE

Keeva DOHERTY

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.