OPPOSITION No B 3 063 388

Fuchs ProCon GmbH, Wegscheid 1a, 92334 Berching, Germany (opponent), represented by Patentanwälte Dr. Keller Schwertfeger Partnerschaft mbB, Westring 17, 76829 Landau, Germany (professional representative)

a g a i n s t

Verma 53 SL, Los Alamos, N-5, 33423 Soto de Llanera, Spain (applicant).

On 25/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 388 is upheld for all the contested goods.

2. European Union trade mark application No 17 901 406 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 901 406 for the word mark ‘PERMA-ZYME’. The opposition is based on German trade mark registration No 302 009 014 353 for the word mark ‘PERMA’. 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.

a) The goods

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

Class 19: Prefabricated components made of concrete, reinforced concrete and prestressed concrete for the production of separators for the treatment of domestic or industrial wastewaters.

The contested goods are the following:

Class 19: Building and construction materials and elements, not of metal.

Contested goods in Class 19

The contested building and construction materials and elements, not of metal. include, as broader categories, the opponent’s prefabricated components made of concrete, reinforced concrete and prestressed concrete for the production of separators for the treatment of domestic or industrial wastewaters. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods they are considered identical to the opponent’s goods.

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 relevant goods found to be identical are directed at a specialised public, with professional knowledge or expertise in the construction/building sector and also at the public at large. Indeed, it is not inconceivable for at least some of the building and construction material to be purchased and installed not only by professionals but also by skilled members of the general public, i.e. DIY amateurs. As regards the public at large, the degree of attention is deemed to be rather high, on account of the technical nature of the goods and their costs.

c) The signs

PERMA	PERMA-ZYME
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 the word mark ‘PERMA’ and the contested sign is a word mark consisting of the verbal elements ‘PERMA’ and ‘ZYME’ connected with a hyphen.

Both signs have the word element word ‘PERMA’ in common. It has no meaning in German and will therefore be perceived as a fanciful word without any meaning for the relevant public. Therefore, it is distinctive to an average degree.

Taking into consideration that the relevant goods are building and construction materials and elements, and since the word element ‘ZYME’ is relatively close to the German substantive ‘enzyme’, which, as shown by the opponent, can be used (such as bio-enzymes) in a concrete mixture in order to increase the strength of concrete, it cannot be excluded that a part of the relevant public will associate the verbal element ’ZYME’ to enzymes. In this case, this element would be of limited distinctiveness for the relevant goods. However, for the vast majority of the relevant public, the element will be seen as a meaningless word element and therefore, distinctive to a normal degree. Since this is the best case scenario for the applicant and, since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public in the relevant territory.

Visually and aurally, the signs coincide in the distinctive element ‘PERMA’, and its sound, which constitutes the sole element of the earlier mark and the first element of the contested sign. This is particularly relevant since 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. The signs differ in the element ‘ZYME’ of the contested sign, and its sound, and in the hyphen which have no counterpart in the earlier sign respectively. Given that the common element ‘PERMA’ has an independent distinctive position in both signs, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the relevant public under analysis 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.

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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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).

In the present case, the goods have been found identical, targeting mainly professionals as well as skilled members of the general public, all of whom will pay a higher than average degree of attention. The signs under comparison have been found visually and aurally similar to an average degree and neither of the signs has a meaning for the relevant public under analysis that could help to differentiate them, and the distinctiveness of the earlier mark is normal.

The signs coincide in ‘PERMA’, being the sole element of the earlier mark and the initial distinctive element of the contested sign, and only differ in the hyphen and the second element of the contested sign. Taking this into consideration and the fact that even consumers who pay a high degree of attention also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54), the differences between the signs do not allow the public to safely distinguish between the marks.

In view of the foregoing, there is a likelihood of confusion on the part of the public in the relevant territory. 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.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 009 014 353. It follows that the contested trade mark must be rejected for all the contested goods.

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

Begoña URIARTE VALIENTE

Martin INGESSON

Kieran HENEGHAN

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.