OPPOSITION Nо B 3 091 041

 

Thomas Kurze GmbH, Beim Zeugamt 3, 21509 Glinde, Germany (opponent), represented by Pricewaterhousecoopers Legal AG Rechtsanwaltsgesellschaft, Alsterufer 1, 20354 Hamburg, Germany (professional representative) 

 

a g a i n s t

 

Unipetrol RPA, s.r.o., Litvínov - Záluží 1, 43670 Litvínov, Czech Republic (applicant), represented by Leopold Dadej, Na Valtické 6, 691 41 Břeclav, Czech Republic (professional representative).

On 21/12/2020, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 091 041 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 and services of European Union trade mark application No 8 040 705  (figurative mark), namely against all of the goods and services in Classes 4 and 35. The opposition is based on international registration No 1 235 352 designating the European Union (figurative mark). 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 and services

 

The services on which the opposition is based are the following: (i.e. the services of the opponent’s international registration No 1 235 352 for which protection in relation to the European Union is granted, as published by WIPO on 19/10/2017, 2017/40 Gaz):

 

Class 35: Retail and wholesale services regarding vehicles, motor vehicle spare parts and/or accessories (except speed variators and regulators for motorcycles and mopeds, exhausts for engines, motorcycles and mopeds, accessories and components thereof, exhausts for motorcycles), machines and/or machine parts, particularly filters, ball bearings, seals, valves, spare parts for the plant construction, pumps, compressors, drying units, cooling units, electric motors, generators, loading facilities, steam traps, fixing materials, lubricants, oils, tools, electrical appliances, home appliances, kitchen utensils, cookware, dishes, cutlery, cooking utensils, diagram plotters, measuring instruments, especially instruments for discharge measurement, pressure measurement, level measurement and thermometry.

The contested goods and services are the following:

Class 4: Industrial oils and greases, waxes and fluids; Lubricating materials, lubricants and motor fuel included in this class, dust absorbing, wetting and binding compositions; Industrial fuels and illuminants, candles and wicks for lighting; Preservative greases and oils, Car oils and greases, Penetrating oils and greases; Greases for the preservation of leather; Mineral oils, other than fuel oils, Dust controlling compositions; Petroleum products and petroleum by-products included in this class; Additives to industrial oils, greases, waxes and fluids, lubricating materials, lubricants and motor fuel; Additives to dust absorbing, wetting and binding compositions; Additives to industrial fuels and illuminants, petroleum products and petroleum by-products; Additives to preservative greases and oils, oils and lubricating materials for vehicles, penetrating oils and greases; Additives to leather-preserving preparations.

Class 35: Business assistance; Management and administration; Business analysis; Research and information; Commercial intermediation services and business brokerage in the field of chemicals for use in industry, science and photography, in the field of cleaning, polishing, scouring and abrasive preparations, in the field of wax-based preparations for the surface treatment of materials and in the field of industrial oils, greases, waxes and fluids, lubricating materials, lubricants, motor fuel, Dust absorbing, wetting and binding compositions, fuels, industrial illuminants, petroleum products and petroleum by-products, preservative greases and oils, oils and lubricating materials for vehicles, penetrating oil and greases and leather-preserving preparations; Commercial information agencies; Import-export agency services; Import-export agencies; Advertising mediation and publicity.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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 opponent’s services in Class 35 are, inter alia, retail services regarding vehicles, motor vehicle spare parts and/or accessories (except speed variators and regulators for motorcycles and mopeds, exhausts for engines, motorcycles and mopeds, accessories and components thereof, exhausts for motorcycles), machines and/or machine parts, particularly lubricants, oils.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

It is also noted that there is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Even a low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services, provided that there is a close connection between the goods involved from the consumers’ perspective, as set out above.

In the present case, the contested goods are identical, or at least similar to a low degree, to the goods involved in the opponent’s retail services regarding vehicles, motor vehicle spare parts and/or accessories (except speed variators and regulators for motorcycles and mopeds, exhausts for engines, motorcycles and mopeds, accessories and components thereof, exhausts for motorcycles), machines and/or machine parts, particularly lubricants, oils.

Specifically, the contested industrial oils and greases; lubricating materials, lubricants and motor fuel included in this class; industrial fuels; preservative greases and oils, car oils and greases, penetrating oils and greases; greases for the preservation of leather; mineral oils, other than fuel oils; petroleum products and petroleum by-products included in this class are identical to the lubricants or oils that are object to the opponent’s retail services, either because they are expressly included in both lists, or because the respective goods involved in the opponent’s retail services include, or overlap with, the contested goods. It should be also noted that goods such as industrial greases and motor fuel cannot be clearly separated from the broad category of oils which encompasses grease oils, fuel oils and combustible oils. As regards petroleum products and petroleum by-products, these goods include various types of oils used as fuels, such as kerosene, home heating oil, diesel fuel etc.

The contested additives to industrial oils, greases, lubricating materials, lubricants and motor fuel; additives to industrial fuels, petroleum products and petroleum by-products; additives to preservative greases and oils, oils and lubricating materials for vehicles, penetrating oils and greases; additives to leather-preserving preparations are similar at least to a low degree to the lubricants or oils that are object to the opponent’s retail services, since such goods usually originate from the same producers and are sold at the same places to satisfy the demand of the same public. Furthermore, some of the additives, for example additives to motor fuels, are complementary to oils which include fuel oils and combustible oils, as explained above.

The contested industrial waxes and fluids; additives to waxes and fluids are commonly offered for sale by the same undertakings that deal with lubricants and oils, for example petrol stations and vehicle service garages. These goods belong to the market sector supplying the automotive industry and are therefore, of interest to the same consumers.

The contested industrial illuminants overlap with the oils involved in the opponent’s retail services, insofar as these categories both contain industrial illuminating oils, for example kerosene for oil lamps etc. Besides, the contested candles and wicks for lighting; additives to illuminants are similar at least to a low degree to oils, since they belong to the same market sector and therefore, are of interest to the same consumers.

Following the same line of reasoning, the contested dust absorbing, wetting and binding compositions; dust controlling compositions; additives to dust absorbing, wetting and binding compositions are identical, or at least similar to a low degree, to the oils involved in the opponent’s retail services since they encompass dust absorbing, wetting and binding compositions in the nature of oils, which are collectively referred to as dust controlling compositions. Furthermore, additives to such compositions are commonly sold in the same places as the main products. They belong to the same market sector and are of interest to the same consumers.

Therefore, all of the contested goods in Class 4 are similar at least to a low degree to the opponent’s retail services regarding vehicles, motor vehicle spare parts and/or accessories (except speed variators and regulators for motorcycles and mopeds, exhausts for engines, motorcycles and mopeds, accessories and components thereof, exhausts for motorcycles), machines and/or machine parts, particularly lubricants, oils in Class 35.

Contested services in Class 35

None of the contested services in this class have any relevant commonalities with the opponent’s services.

The contested business assistance; management; business analysis; research and information; commercial information agencies are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. For example, commercial information agencies concern the field of business analysis, business information and market research.

The contested administration refers to business administration services that help companies with the performance of business operations. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

The contested advertising mediation and publicity consist of providing others with intermediary assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. These services are provided by, inter alia, advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services.

In contrast, the opponent’s retail and wholesale services in relation to a range of specific goods do not consist of the mere act of selling the goods, but in the services rendered around the actual sale of the goods.

The Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34).

The abovementioned contested services rendered to support other businesses do not have the same nature or purpose as those of the opponent’s retail services. Retail services allow consumers to satisfy different shopping needs in one place and are usually directed at the general consumer. They can take place in a fixed location, such as a department store, supermarket, boutique or kiosk, or in the form of non-shop retailing, such as through the internet, by catalogue or mail order. These services do not share the same usual providers, nor do they coincide in their channels of distribution. The relevant public of these services is not the same, either. Furthermore, they are neither complementary nor in competition.

Since wholesale services consist in the services revolving around the sale of commodities in quantity, usually for resale, the above considerations given regarding the opponent’s retail services also apply in relation to the opponent’s wholesale services.

The contested commercial intermediation services and business brokerage in the field of chemicals for use in industry, science and photography, in the field of cleaning, polishing, scouring and abrasive preparations, in the field of wax-based preparations for the surface treatment of materials and in the field of industrial oils, greases, waxes and fluids, lubricating materials, lubricants, motor fuel, dust absorbing, wetting and binding compositions, fuels, industrial illuminants, petroleum products and petroleum by-products, preservative greases and oils, oils and lubricating materials for vehicles, penetrating oil and greases and leather-preserving preparations are services rendered by specialists with the purpose of helping businesses to resolve their business-related problems, be it in the area of purchase or in the context of wholesaling and retailing. Commercial intermediation and business brokerage also include services when a third party puts sellers and buyers of something in contact, negotiates between them and gets commission for such services.

The contested import-export agency services; import-export agencies are not considered to be a sales service. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. While these services are aimed at supporting or helping other businesses to do business and are preparatory or ancillary to the commercialisation of goods, they do not relate to the actual retail or wholesale of the goods. The fact that the subject matter of the import/export services and the goods in question are the same is not a relevant factor for finding similarity. The same arguments essentially apply to the comparison of import and export agency services to the retail and wholesale of goods. The nature and purpose of these services is different and the providers are not usually the same. As to complementarity, the services can only be complementary if they target the same relevant public. In this respect, while a retail or wholesale company may require import/export services, those services would not be acquired by the end consumer purchasing the goods offered at retail or wholesale.

Therefore and despite the opponent’s arguments in this regard, all of the contested services in this class are dissimilar to the opponent’s services.

It remains to be noted that the opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. The opponent refers to decision of 27/11/2008, B 650 467, to support its arguments regarding the alleged similarity between some services in Class 35. However, the previous decision is not relevant to the present proceedings, because it was taken more than 10 years ago; over these years the practice of the Office has changed and evolved. Although the previous decision considered ‘management and administration’ similar to ‘wholesale services’ since these services consist of services around the actual sale of goods, and coincide in nature, purpose and targeted consumers, none of these criteria can be established in the present case, for the reasons given in detail hereinabove.

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 similar at least to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

The relevant public’s degree of attention varies from average to above average, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) 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 signs under comparison are figurative marks which can be perceived as containing some letters.

The earlier mark is likely to be perceived as a combination of the letters T and K, although other interpretations cannot be entirely ruled out. For example the Bulgarian public may perceive the letter P of the Cyrillic alphabet, П, combined with the letter K.

In the contested sign, whilst it can be safely assumed that the relevant public will recognise a letter T, the other shape present in the sign may require some mental effort to decipher it. This shape, consisting in an angular line with an opening to the right, departs from the standard graphemes in the relevant alphabets. It may thus be seen as a stylised depiction of the letter C, or – admittedly – part of the public may perceive it as a very highly stylised letter K in which the vertical stem is missing and/or must be seen as doubling the vertical stem of the letter T.

 

For the purposes of this comparison, the Opposition Division will assess the signs from the perspective of the public which perceives the signs as both being composed of the letters T and K, as this is the most advantageous scenario for the opponent.

Neither of the signs has any element that is more distinctive or dominant than the other. Nor will the relevant public attribute any clear and specific meaning to the letter combination TK. Rather, it will be perceived as a meaningless, fanciful combination of these letters that could be an abbreviation for any given expression containing two terms that start with these letters.

It follows that, 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.

Aurally, the signs are identical for the public under analysis.

 

Visually, the signs coincide in the shape of the grapheme T, although the specific depictions differ. In the earlier mark, the lines forming this grapheme are thick and sturdy. The grapheme itself is in an upright position and does not depart from a normal typeface. The sole exception is that the horizontal bar of the letter T is connected to the tip of the vertical stem of the letter K. The grapheme K is depicted in a regular typeface, save for the diagonal strokes that intersect neither between themselves nor to the vertical stem. These features are in clear contrast to the contested sign since it is depicted in fine, italicised lines. In the contested sign, the letter T is somewhat stylised, insofar as its vertical bar is interrupted at the right-hand side of the vertical stem. Next to the letter T, a letter K can be discerned by the public under analysis. Nevertheless, its manner of depiction is very unusual. Furthermore, the stylisation of the letter K is visually an important aspect of the contested sign as a whole.

Whilst, for the public under analysis, both signs contain the letters T and K, and the latter features an angular line with an opening to the right, the fact remains that the depictions of the grapheme K are very different. In addition to what has been stated above, it must be emphasised that the earlier mark contains two vertical lines (i.e. corresponding to parts of the letters T and K), whereas in the contested sign there is only one vertical line. These differences are not insignificant and must be given due weight in the comparison.

In this regard, it must be taken into account that the length of signs may influence the effect of the differences between them. In principle, the shorter a sign, the more easily the public is able to perceive all its single elements.

Here, the visual overall impressions of the signs display immediately perceptible differences on account of the strikingly different stylisations of the letters.

Therefore, for the public under analysis, the degree of visual similarity between the signs is considered to be very low.

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 clear meaning for any of the services in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

 

The contested goods and services have been found similar to various degrees, or dissimilar, to the opponent’s services. The goods and services found similar at least to a low degree are directed at the general public and at professionals whose degree of attention varies from average to above average in relation to the purchases in question. The earlier mark has an average degree of inherent distinctiveness.

However, as regards the similarity between the signs, even for the part of the relevant public which perceives both of them as the combination of the letters T and K, the degree of similarity between the signs is very low on the visual level.

As set out in detail in section c) of this decision, the conflicting signs display striking visual differences which are especially relevant considering the fact that the signs are short marks. This is a very important factor to be taken into account when evaluating the likelihood of confusion. Consequently, the overwhelming visual differences weigh strongly against the finding that for the public under analysis the signs do not contain any concept that would help to differentiate between them and that from the aural perspective the signs are identical.

It is, therefore, concluded that the signs are not sufficiently similar to give rise to a situation where the relevant public directly confuses them, despite the imperfect recollection of the signs that consumers tend to rely on. Nor are the signs similar enough to lead the relevant public to think that they designate goods and services of the same undertaking, or an economically-linked undertaking, through likelihood of association.

The opponent refers to the principle of interdependence which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that some of the relevant goods and services are similar (to an average degree), in this case, cannot compensate for the differences identified between the signs. Likewise, the fact that the signs are aurally identical is insufficient to counteract the strong differences between the signs on the visual level.

 

Considering all the above, there is no likelihood of confusion on the part of the public which perceives both signs as composed of the letters T and K.

 

This absence of a likelihood of confusion equally applies to the remaining part of the public which perceives the signs differently, as outlined in section c) of this decision. This is because, as a result of the presence of the different letters or undecipherable symbols in the signs, that part of the public will perceive the signs as being even less similar.

Therefore, the opposition must be rejected.

 

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

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) 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

 

 

Oana-Alina STURZA

Solveiga BIEZA

Rasa BARAKAUSKIENÉ

 

 

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.