OPPOSITION No B 2 640 475

 

DAKO Aktiengesellschaft, Chemische Spezialprodukte, Am Klingenbach 2, 97353 Wiesentheid, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

 

a g a i n s t

 

PCC ROKITA Spółka Akcyjna, ul. Sienkiewicza 4, 56-120 Brzeg Dolny, Poland (applicant), represented by JWP Rzecznicy Patentowi Dorota Rzążewska sp. j., ul. Żelazna 28/30, 00-833 Warszawa, Poland (professional representative).

 

On 26/09/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 640 475 is rejected in its entirety.

 

2.        The opponent bears the costs, fixed at EUR 300.

 

 

REASONS:

 

The opponent filed an opposition against all the goods of European Union trade mark application No 14 546 766 for the word mark ‘Rokolub’, namely against all the goods in Class 1. The opposition is based on European Union trade mark registration No 9 300 567 for the word mark ‘DAKOLUB’. 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:        Industrial chemicals, in particular chemical textile auxiliary agents, chemical cleaning preparations for use in the course of production, spinning preparations.

 

Class 4:        Industrial oils and greases; lubricants, in particular with a base of sustainable raw materials.

 

The contested goods are the following:

 

Class 1:        Chemicals used in industry and scientific research as synthetic base oil group V and synthetic additives, namely polyalkylene glycols, alkylene oxide homo- and copolymers, mono-and multi-function polyether polyols, polyoxyalkylated alcohols, modified polyalkylene glycols as well as alkyl, alkyl-aryl and aryl phosphoric esters used as base stock and additives for making lubricant formulations, including formulations for compressors, industrial gears, special-purpose fluids including hydraulic fluids, quenching fluids and machining fluids, antifoaming agents, chemical compounds and preparations for use as formulation auxiliaries.

 

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

 

The terms ‘in particular’ and ‘including’, used in the opponent’s and applicant’s lists of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

 

Contested goods in Class 1

 

All the contested goods in Class 1 overlap with the broad category of the opponent’s industrial chemicals in Class 1. Therefore, they are identical.

 

 

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.

 

The goods at issue are specialised goods directed at business customers with specific professional knowledge or expertise.

 

The opponent alleges in its statement of grounds that the goods in question target the public at large; however, this cannot be accepted. From the specifications of both the earlier mark and the contested sign, it is evident that the goods in question are for industrial use and/or scientific research and, consequently, are not ordinary products targeting the public at large but are specialised goods targeting exclusively a specific and specialised group of professional consumers.

 

Therefore, the degree of attention is considered high owing to the specialised nature of the goods.

 

 

3. The signs

 

 

 

DAKOL DAKOLUB	Rokolub
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 sign is a word mark, ‘DAKOLUB’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

 

The contested sign is the word mark ‘Rokolub’.

 

The parties disagree concerning the distinctiveness of the coinciding ending ‘LUB’. While the applicant claims that the relevant consumers will immediately associate it with lubricants or lubrication and it has, therefore, a very limited degree of distinctiveness, the opponent argues that it cannot be inferred that ‘LUB’ is a commonly used abbreviation for lubricants and that, in most languages of the European Union, the translation of the English word ‘lubricant’ is a completely different word. Therefore, there is no reason for consumers to perceive ‘LUB’ as a reference to lubricants because they do not know the English word ‘lubricant’.

 

In this regard, it should be noted that, in English, the word ‘lube’ is used for ‘lubricant’ or ‘to lubricate’ (information extracted from Collins Online Dictionary on 26/09/2017 at https://www.collinsdictionary.com/dictionary/english/lube). In addition, according to case-law of the General Court, the English-speaking part of the relevant public perceives ‘LUBE’ as referring to lubricants (29/09/2010, T-200/08, Foodlube, ECLI:EU:T:2010:414, § 32).

 

However, it cannot be automatically inferred from the above and it has not been proven by the applicant that the same applies to ‘LUB’. Moreover, the case-law cited by the applicant refers to ‘LUBE’ (which would have a limited degree of distinctiveness for the relevant goods). The trade marks listed in the applicant’s observations that have the endings ‘LUBE’ or ‘LUB’ do not demonstrate how ‘LUB’ is perceived by the relevant public or prove that it alludes to the English word ‘lubricants’. The list merely shows that there are trade marks with such endings. Consequently, and also considering that this is the best-case scenario for the applicant, the Opposition Division will proceed on the basis that ‘LUB’ will not be associated with a meaning and has a normal degree of distinctiveness for the goods in question.

 

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. In the present case, the first two letters of the signs are different.

 

Visually, both signs consist of seven letters and they coincide in the sequence of letters ‘KOLUB’. They differ in their first two letters, ‘DA’ and ‘RO’; however, these letters will have a stronger impact on the relevant public and are more striking than the coincidence in the following letters.

 

Therefore, the signs are visually similar to a lower than average degree.

 

Aurally, along the same line of reasoning as in the visual comparison, the signs are similar to a lower than 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.

 

 

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

 

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.

 

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 conflicting goods are identical and the conflicting signs are visually and aurally similar to a lower than average degree.

 

The signs have different beginnings and they coincide in their endings. However, as already mentioned above in section c) of this decision, consumers pay greater attention to the beginnings of word marks. Together with the fact that the goods in question are highly specialised goods and the consumers are professionals with a specific knowledge and are expected to be highly attentive when purchasing them, the difference at the beginnings of the signs will not go unnoticed by the relevant consumers.

 

The opponent has neither claimed nor submitted any evidence supporting a higher degree of distinctiveness of its trade mark on account of extensive use.

 

Moreover, the opponent refers to previous decisions of the Office to support its arguments. In the decisions cited by the opponent, the Office has found that there is a likelihood of confusion between marks that have different beginnings but the same endings, as in the present case. However, it should be noted that 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.

 

In the case at hand, the previous cases referred to by the opponent are not relevant to the present proceedings. In case 21/02/2013, R 985/2012-4, RETROIS (FIG. MARK) / JITROIS, the contested goods are ordinary goods in Classes 18 and 25 that target the public at large. In addition, in case B 1 497 646, the contested goods are goods in Class 25 purchased on a daily basis by the public at large. In case B 1 378 118, it was found by the Opposition Division that the goods in question target the public at large, as well as professional consumers. As already explained above in section b) of this decision, the goods in question are specialised goods that target only a professional public with specific knowledge and expertise. As this is a main difference between the present case and the cited previous Office decisions, the outcome cannot be the same. The different beginnings of the trade marks will not go unnoticed by the highly attentive consumers of the goods in question; therefore, they cannot be misled by the remaining identical parts of the signs into thinking that those goods come from the same undertaking or economically linked undertakings.

 

For the sake of completeness, the Opposition Division points out that the absence of a likelihood of confusion applies equally to the case where the relevant public would associate the ending ‘LUB’ with lubricants. This is because, as a result of the weak character of that element, that relevant public will not perceive the signs as being more similar.

 

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

 

 

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

 

According to Rule 94(3) and Rule 94(7)(d)(ii) 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

 

 

Lars HELBERT

Alexandra APOSTOLAKIS

Denitza STOYANOVA-VALCHANOVA

 

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.