OPPOSITION No B 2 636 804
CBA World, 25A, Boulevard Royal, 2449 Luxembourg, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d’Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative)
a g a i n s t
Werner & Mertz GmbH, Rheinallee 96, 55120 Mainz, Germany (applicant), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartgmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 636 804 is upheld for all the contested goods.
2. European Union trade mark application No 14 338 644 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 338 644. The opposition is based on, inter alia, Benelux trade mark registration No 964 398. 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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 964 398.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 1: Chemical products for use in industry, science, photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; soil fertilizers; fire-extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning materials; adhesives for use in industry; nitric acid; benzoic acid; boric acid for industrial use; carbonic acid; hydrochloric acid; cholic acid; chromic acid; citric acid for industrial use; hydrofluoric acid; formic acid; iodic acid; persulfuric acid; phosphoric acid; acids; salicylic acid; benzene-based acids; fatty acids; mineral acids; sulfonic acids; sulfurous acid; sulfuric acid; tartaric acid; chemical additives for fungicides; chemical additives to insecticides; chemical additives for oils; detergent additives for industrial greases and lubricants; adhesives used in industry; adhesives for wall tiles; alcohol; amyl alcohol; ethyl alcohol; ammonium aldehyde; formic aldehyde for chemical use; alginates for industrial use; ammonia [volatile alkali] for industrial purposes; starch for industrial purposes; antifreeze; anti-incrustants; antimony; bases [chemical products]; methyl benzene; methyl benzol; bicarbonate of soda for chemical use; tin dichloride; bromine for chemical use; camphor for industrial use; magnesium carbonate; carbonates; calcium carbide; carbide; chemical catalysts; caustics for industrial use; activated carbon; carbon for filters; chlorates; chlorine; chlorhydrates; defoliants; benzene derivatives; dehydrating preparations for industrial use; disincrustants; scale removing preparations, other than for household use; detergents for industrial use; detergents used in manufacturing processes; oil dispersants; oil dispersants; dispersions of plastic materials; solvents for varnishes; carbon disulphide; sea water for industrial use; distilled water; hydrogen peroxide; potash water; emollients for industrial use; emulsifiers; enzymes for industrial use; wood alcohol; salammoniac spirit; spirits of salt; spirits of vinegar [dilute acetic acid]; ethyl ether; methyl ether; cellulose ethers for industrial use; glycol ethers; sulfuric ether; ferrocyanides; transmission fluids; auxiliary fluids for abrasives; magnetic fluid for industrial use; glycol; tragacanth gum for industrial use; gum arabic for industrial purposes; graphite for industrial use; aluminum hydrate; carbohydrates; hydrates; hypochlorite of soda; iodine for chemical use; alkaline iodides for industrial use; iodine for industrial use; magnesite; manganate; oil-based mastic; glaziers’ putty; polish removing substances; filtering materials [chemical preparations]; filtering materials [mineral substances]; filtering materials [vegetable substances]; filtering materials [unprocessed plastics]; synthetic materials for absorbing oil; mordants for metals; chromium oxide; antimony oxide; cobalt oxide for industrial use; diazote oxide; lead oxide; mercuric oxide; oxygen; wood pulp; perchlorates; persulfates; percarbonates; phenol for industrial use; phosphatides; phosphorus; bacterial preparations other than for medical and veterinary use; bacteriological preparations other than for medical or veterinary use; bacteriological preparations for acetification; biological preparations other than for medical or veterinary use; chemical preparations for scientific use other than for medical or veterinary use; purification preparations; preparations of microorganisms other than for medical or veterinary use; soil conditioning preparations; metal-hardening preparations; diagnostic preparations other than for medical or veterinary use; steel finishing preparations; chemical condensation preparations; chemical products for facilitating the alloying of metals; water-repllent chemical products for masonry excluding paints; wax-bleaching chemicals; stain-preventing chemicals for use on fabrics; concrete-aeration chemicals; chemical products for the manufacture of paints; chemical products for the manufacture of pigments; chemical preparations, except pigments, for the manufacture of enamel; chemical products for purifying water; enamel-staining chemicals; glass-staining chemicals; color brightening chemicals for industrial use; textile-brightening chemicals; chemical chimney cleaners; chemical products for waterproofing textiles; cement waterproofing chemicals excluding paints; industrial chemicals; glass-frosting chemicals; antitarnishing products for windows; preparations for preventing the tarnishing of glass; antistatic products other than for household use; corrosive products; bleaching products [decolorants] for industrial use; degumming products; degreasing products for use in manufacturing processes; fat-bleaching chemicals; oil-bleaching chemicals; separating and unsticking [ungluing] products; products for preventing runs in stockings; masonry preservatives, except paints and oils; brickwork preservatives, except paints and oils; preservatives for tiles, except paints and oils; concrete preservatives, except paints and oils; rubber preservatives; cement preservatives, except paints and oils; products for the separation of greases; oil-separating chemicals; galvanizing products; oil-purifying chemicals; sizing products; wallpaper removing products; opacifiers for enamel or glass; unprocessed acrylic resins; unprocessed artificial resins; unprocessed epoxy resins; unprocessed synthetic resins; sal ammoniac; raw salt; salt for preserving, other than for foodstuffs; salts for industrial use; chromic salts; ammonium salts; calcium salts; chrome salts; iron salts; salts of alkaline metals; sodium salts [chemical compounds]; salts for coloring metal; salts for galvanic cells; salts [chemical preparations]; aluminum silicate; barium sulfate; sulfates; wood vinegar [pyroligneous acid].
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; abrasives; canned pressurized air for cleaning and dusting purposes; boric acid for household use for cleaning; citric acid for household use, for cleaning; detergent additives for lubricants and greases, for cleaning; adhesives for cosmetic use; formic aldehyde for household use, for cleaning; alginates for household use, for cleaning; ammonia [volatile alkali] for household use; ammonia [volatile alkali] used as detergent; silicon carbide [abrasive]; carbides of metal [abrasives]; starch for household use; bases [household products], for cleaning; baking soda, for household use, for cleaning; bromine for household use, for cleaning; camphor for household use, for cleaning; volcanic ash for cleaning; parquet floor wax; polishing wax; corundum [abrasive]; cleaning chalk; scouring solutions; floor wax removers (scouring preparations); stain removers; scale removing preparations for household use; detergents for household use; diamantine [abrasive]; Javelle water; sea water for household use, for cleaning; emery; enzymes for household use, for cleaning; cellulose ethers for household use, for cleaning; oils for cleaning purposes; cleansing gels; chrome cleaners; polishing paper; sandpaper; emery paper; tragacanth gum for household use, for cleaning; Arabic gum for household use, for cleaning; graphite for household use, for cleaning; iodine for household use, for cleaning; iodides and alkaline iodides for household use, for cleaning; cobalt oxide for household use, for cleaning; phenol for household use, for cleaning; all the aforementioned products being intended for cleaning; abrasive papers; polishing stone; pumice stone; polishing preparations; tile cleaning products; cleaning products; paint stripping products; lacquer-removing products; color-removing products; varnish-removing products; shining products [polish]; wallpaper cleaning products; rust removing products; smoothing products [starching]; color-brightening chemical products for household use [laundry]; products to prevent the build-up of stains on fabrics, for cleaning; turpentine for degreasing; salts for household use for bleaching and cleaning; terpenes [essential oils]; emery cloth; abrasive cloth; glass cloth; cloths impregnated with a detergent for cleaning.
After a limitation filed by the applicant on 16/11/2016, the contested goods are the following:
Class 1: Chemicals used in industry; plastics in the form of dispersions all aforementioned goods for the professional cleaning sector.
Class 3: Bleaching preparations and other substances for laundry use, stain removing preparations; furbishing preparations, polishing preparations, cleaning preparations, preparations for preserving leather (wax), and care preparations for floors, cars and for the sanitary sector, included in class 3, preparations for cleaning and care of carpets, upholstered furniture and textiles; scouring and abrasive preparations, preparations for the preservation of floor coverings; all aforementioned goods for the professional cleaning sector.
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.
According to the Office’s practice, the function of a semicolon in the list the goods and services is to separate parts of a sentence that have different concepts. Therefore, by applying common sense, the Opposition Division considers that the omission of a semicolon before the limitation all aforementioned goods for the professional cleaning sector in the applicant’s list in Class 1 must be interpreted as the applicant’s intention to limit both terms included in this Class, as suggested in the applicant’s observations of 16/11/2016. Therefore, the Opposition Division will compare the goods chemicals used in industry; plastics in the form of dispersions; all aforementioned goods for the professional cleaning sector, each one with the limitation.
Contested goods in Class 1
The contested chemicals used in industry; all aforementioned goods for the professional cleaning sector are included in the broad category of the opponent’s chemical products for use in industry. Therefore, they are identical.
The contested plastics in the form of dispersions; all aforementioned goods for the professional cleaning sector are included in the broad category of the opponent’s dispersions of plastic materials. Therefore, they are identical.
Contested goods in Class 3
The contested bleaching preparations and other substances for laundry use; all aforementioned goods for the professional cleaning sector are included in the broad category of the opponent’s bleaching preparations and other substances for laundry use. Therefore, they are identical.
The contested stain removing preparations; all aforementioned goods for the professional cleaning sector are included in the broad category of the opponent’s stain removers. Therefore, they are identical.
The contested furbishing preparations, polishing preparations; all aforementioned goods for the professional cleaning sector are included in the broad category of the opponent’s polishing preparations. Therefore, they are identical.
The contested cleaning preparations, preparations for cleaning and care of carpets, upholstered furniture and textiles; all aforementioned goods for the professional cleaning sector are included in the broad category of the opponent’s cleaning preparations. Therefore, they are identical.
The contested scouring and abrasive preparations; all aforementioned goods for the professional cleaning sector are included in the broad category of the opponent’s abrasive preparations. Therefore, they are identical.
The contested care preparations for floors, cars and for the sanitary sector, included in Class 3; all aforementioned goods for the professional cleaning sector overlap with the opponent’s cleaning preparations. Therefore, they are identical.
The contested preparations for the preservation of floor coverings; all aforementioned goods for the professional cleaning sector overlap with the opponent’s parquet floor wax. Therefore, they are identical.
The contested preparations for preserving leather (wax); all aforementioned goods for the professional cleaning sector overlap with the opponent’s polishing wax. Therefore, they are identical.
Remarks on the comparison of goods
The applicant argues that, following the limitation, the goods covered by the marks at issue are different and that there is no commercial overlap between them, given that the applicant’s goods all target the industrial (professional) cleaning sector and are not for household use; thus, the purpose, distribution channels and/or relevant public are different.
The comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).
Although the contested goods in Classes 1 and 3 are defined as being designed for a specific application, that is, for the professional cleaning sector, the opponent’s goods that have been found identical, for instance chemical products for use in industry in Class 1 and cleaning preparations in Class 3, are defined broadly.
The foregoing comparison of goods is based on the relevant factors established by case-law, taking into account the circumstances that are expected for the given categories of goods and services covered by the marks at issue. Therefore, the applicant’s arguments must be set aside.
- 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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
| GUARD | |
|
Earlier trade mark |
Contested sign |
The relevant territory is Benelux.
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 unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.
The contested mark consists of the word mark ‘GUARD’.
The earlier mark is a figurative mark containing the verbal element ‘GUARD’ written in thick upper case black letters with a thin white outline placed inside a frame or a shield shaped element in silver. The verbal element ‘GUARD’ is the dominant element of the contested sign, due to its position in the centre and its colour, while the figurative element is secondary, due to its rather decorative character.
The vast majority of the French-speaking part of the relevant public will not attribute any meaning to the verbal element ‘GUARD’. However, it cannot be excluded that a part of the relevant public may associate the verbal element ‘GUARD’ with the French word ‘GARDE’, referring to, inter alia, the acting of protecting, monitoring (Information extracted from Larousse.fr : encyclopédie et dictionnaires gratuits en ligne on 29/05/2017 at http://www.larousse.fr/). However, the Opposition Division considers that only a very small part of the relevant public will associate the mark with this meaning. Therefore, the analysis below will continue on the basis that the verbal element ‘GUARD’ is meaningless for the French-speaking part of the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The figurative features of the earlier sign, that is, the graphical arrangement of the sign and the frame or shield shaped element, are purely decorative and, as such, are less distinctive than the other elements, which have a normal degree of distinctiveness.
Visually, the signs coincide in the verbal element ‘GUARD’, which constitutes the only component of the contested mark and is the earlier sign’s distinctive element. However, the signs differ in the specific stylisation of the verbal element ‘GUARD’ and the figurative element of the earlier mark, which is less distinctive than the verbal element.
As correctly pointed out by the applicant, 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; decisions of 19/12/2011, R 233/20114, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) /DEVICE OF AN ELEPHANT (fig.), § 59).
Given that the earlier mark’s distinctive element is fully reproduced in the contested sign, the signs are highly similar visually.
Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‛GUARD’, present identically in both signs (the figurative elements of the contested sign will not be pronounced).
Therefore, the signs are aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks in the perception of the relevant public. 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.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, 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 between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (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).
The similarity between the signs results from the fact that the contested sign, being inherently distinctive in relation to the goods at issue, is fully reproduced in the earlier mark’s distinctive component, namely the verbal element ‘GUARD’. When encountering the signs at issue, the relevant public may think that the earlier mark is a graphical depiction of the contested sign, featuring the same verbal element emblazoned against an embellishing figurative element.
Therefore, it is considered that the differences limited to the earlier mark’s figurative element are clearly unable to distinguish the overall impressions produced by the signs sufficiently to enable the relevant public to safely distinguish between the signs in the context of the identical goods at issue.
Considering all the above, and also bearing in mind that the earlier mark has a normal degree of distinctiveness and that average consumers rarely have the chance to make a direct comparison between the marks, but must trust in their imperfect recollection of them, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public. This is equally true in relation to the goods for which a higher degree of attentiveness can be expected on behalf of the relevant consumers, as the visual and aural similarities between the signs nonetheless prevail. 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 Benelux trade mark registration No 964 398. It follows that the contested trade mark must be rejected for all the contested goods.
As earlier Benelux trade mark registration No 964 398 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
| Francesca CANGERI
SERRANO
|
José Antonio
GARRIDO OTAOLA |
Michele M.
BENEDETTI-ALOISI |
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.