OPPOSITION No B 2 676 131

Logimatic Systems, S.L., Polígono Arazuri-Orkoyen calle E, parcela 2-3, 31170 Arazuri, Spain (opponent), represented by Juan Carlos Riera Blanco, Avda. Concha Espina, 8 – 6º D, 28036 Madrid, Spain (professional representative)

a g a i n s t

Insa Eood, ul. Predel No 1, 4150 gr. Rakovski, Bulgaria (applicant), represented by Nelly Pencheva & Partners, Ibar str. 21, 1st floor, 4003 Plovdiv, Bulgaria (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 676 131 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of goods and services of European Union trade mark application No 14 511 729, namely against all the goods and services in Classes 1, 3, 4, 35 and 39. The opposition is based on, inter alia, European Union trade mark registration No 10 436 541. 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 European Union trade mark registration No 10 436 541.

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1. The goods and services

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

Class 35: Advertising; business management; business administration; consultancy services and commercial consultancy; sales promotion (for others); importing and exporting agencies; retailing, wholesaling and sale via global computer networks of all kinds of carburants, liquid fuel, oils, lubricants and additives.

Class 39:        Transport; packaging, storage and distribution of goods; travel arrangement.

The contested goods and services are the following:

Class 1: Oil (synthetic materials for absorbing -); fillers for automobile bodies; adhesives for industrial purposes; aldehydes; alkaloids; alcohol; anti-boil preparations for engine coolants; antifreeze; anhydrides; acetates (chemicals-); acetone; mordants for metals; galvanizing baths; benzene derivatives; chemical preparations for themanufacture of paints; polish removing substances; water softening preparations; combusting preparations [chemical additives to motor fuel]; graphite for industrial purposes; sizing preparations; coolants for vehicle engines; anti-knock substances for internal combustion engines; distilled water; detergent additives to gasoline; chemical additives for oils; chemical additives to motor fuel; enzyme preparations for industrial purposes; ethyl ether; catalysts; acids; condensation preparations (chemical -); glue for industrial purposes; oil-purifying chemicals; oil-separating chemicals; methane; methyl ether; dehydrating preparations for industrial purposes; fireproofing preparations; bases (chemicals); oil-purifying chemicals; plasticizers; acidulated water for recharging accumulators; fuel-saving preparations; grease-removing preparations for use in manufacturing processes; purification preparations; degumming preparations; water purifying chemicals; industrial chemicals; engine-decarbonising chemicals; solvents for varnishes; silicones; greases (preparations for the separation of -); unprocessed artificial resins; brake fluid; power steering fluid; toxic gas neutralizers; transmission fluid; fluids for hydraulic circuits.

Class 3:         Grinding preparations; air fragrancing preparations; essential oils; laundry preparations; skin whitening creams; cosmetic kits; cosmetics; towels, impregnated with cleaning preparation; tissues impregnated with cosmetic lotions; oils for cosmetic purposes; oils for cleaning purposes; washing preparations; colorants for toilet purposes; perfumery; laundry preparations; polishing creams; polishing preparations; color-removing preparations; color-removing preparations; rust removing preparations; stain removers; grinding preparations; shining preparations (polish); dry-cleaning preparations; scouring solutions; soap; sunscreen preparations; toiletries; sandpaper; shampoo; emery.

Class 4:         Gasoline; oils for paints; solidified gas (fuel); producer gas; gas for lighting; fuel gas; gasoline; vaporized fuel mixtures; methyl benzene; fuel; carburants; non- chemical fuel additives; lighting fuel; fuel with an alcoholic base; graphite as a lubricant; grease for belts; lubricating grease; additives, non-chemical, to motor fuel; ethanol [fuel]; petroleum ether; carburants; kerosene; mazut; fuel oil; lubricating oil; rape oil for industrial purposes; mineral fuel; motor oil; gas oil; oil-gas; moistening oil; arms [weapons] (grease for -); industrial grease; industrial oil; lubricants; alcohol (fuel); naphtha; fuel oil; peat for fuel.

Class 35:        Import-export agency services; commercial information agencies; administrative processing of purchase orders; payroll preparation; issuing of invoices; provision of commercial information; organisation of exhibitions for commercial or advertising purposes; computerised file management; business management consulting; marketing; on-line advertising on a computer network; presentation of goods on communication media for retail purposes; marketing studies; publication of publicity texts; radio advertising; sample distribution; distribution of advertising material; advertising; bill-posting; television advertising; publication of publicity texts; systemization of information into computer databases; business inquiries; drawing up statements of account; television advertising; professional business consulting; business appraisal; business consultations.

Class 39:        Bus transport; motor car transport services; ship transport; transport by air; freight forwarding; railway transport; storage information; transportation information; shipbrokerage; freight brokerage; wrapping of goods; rental of warehouses; vehicle rental; rental of storage containers; packaging of goods; transport of goods for travellers; carting; passenger transport; delivery of goods; storage; goods warehousing; transport; transportation logistics; transport by pipeline.

Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 and services assumed to be identical are directed at the public at large and at business customers. For instance, the transport related services in Class 39 are either specialised services directed at business customers with specific professional knowledge or expertise, either are general transport services carried out by various means of transport by professional companies and are targeted at general consumers. Some of the contested goods in Class 1 are oil-related chemicals, and other types of chemicals, and the contested goods in Class 3 are the industrial oils, greases and fuels, and therefore they target the professionals only. Bearing this in mind, the level of attention of the business customers in industry may vary from average to high depending on the kind and type of the goods used in the industry, their price and purpose.

The degree of attention is deemed to be average as regards the general public, and may vary from average to high as regards the business public.

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 consists of the device including the grey upper case letters ‘LS’ conjoined in their bottom parts in such a way that the left side of the letter ‘S’, which is a little bit bigger in size, incorporates the bottom of the letter ‘L’. However, in perception of the relevant public these letters can be also seen as the letters ‘IS’ conjoined. Above the letter ‘L’ (‘I’) are placed two squares in blue of which one on top is slightly smaller and more rounded in shape; the third blue square is in the midway on their left side, and the same fourth one is on the top right side of the letter ‘S’. Below the ‘LS’ (‘IS’)  device is the lettering of the word ‘LOGIMATIC’ in big standard grey upper case letters and the word ‘systems’, which is situated below in smaller blue lower case letters.

The contested sign consists of analogous ‘LS’ or ‘IS’ letter device on the left hand, with the exception that the conjoined letters are white upper case letters in the same size and they are placed in dark green square serving as a background. On the right side of this element is the word ‘INSA’ in green capital letters, and below are placed smaller white capital letters of the words ‘MOTOR OILS’ in the grey rounded edge strip.

The letter device ‘LS’ (‘IS’) together with the lettering ‘INSA’ are considered as co-dominant elements in the contested sign since they overshadow the remaining elements by virtue, in particular, of their size.

The earlier sign has no elements that can be considered clearly more dominant than other elements.

The common letters ‘LS’/’IS’ of each mark are distinctive since have no meaning for the relevant public for any of the signs in relation to the goods and services in question. As regards the earlier mark, for some part of the relevant public these letters could be seen as the abbreviation of the initial letters of the words ‘LOGIMATIC systems’ contained in the mark.

The word element ‘LOGIMATIC’ in the earlier mark has no meaning per se nor does it clearly allude to any specific semantic content and is, therefore, distinctive. However, the element ‘systems’ in the earlier mark will be understood by the vast majority of the European Union public accordingly to its meaning in English (‘A system is a way of working, organizing, or doing something which follows a fixed plan or set of rules.(…)’ Collins English Dictionary, online edition), also considering its closeness to its equivalent in various other languages (for instance ‘sistema’/’sistemi’ in Italian,  ‘sistema’/’sistemas’ in Spanish or ‘system’/’systemy’ in Polish). Therefore, this word element can be considered as a weak element in the earlier mark in relation to the services in question as indicating some kind of ready solutions offered within the purchased services.

The contested sign includes the meaningless, and therefore distinctive word ‘INSA’ and the words ‘MOTOR OILS’ that will be understood by part of the European Union public, for instance the English-speaking part for which both elements are meaningful and descriptive in relation to the part of the contested goods/services e.g. motor car transport services covered by the contested sign. However, in perception of the remaining part of the relevant public only the ‘MOTOR’ element of the contested sign will be meaningful and descriptive (e.g. the Bulgarian- and Polish-speaking part of the European Union public).

The letters ‘LS’/’IS’ in both marks are considered more distinctive than other weak (the word ‘systems’ in the earlier mark) or descriptive (the words ‘MOTOR’ and/or ‘OILS’) elements. Nevertheless, both marks contain additional differing and distinctive word elements such as ‘LOGIMATIC’ (the earlier mark) and ’INSA’ (the contested sign).

Visually, the signs coincide in the letters ‘LS’ (’IS’) that to some extent are arranged graphically in a similar way. However, the signs differ in the distinctive word elements ‘LOGIMATIC’ (the earlier mark)/’INSA’ (the contested sign), and weak or non-distinctive elements ‘systems’ (the earlier mark)/’MOTOR’ and/or ‘OILS’ (the contested sign). The signs also differ in their colouring which is grey and blue (the earlier mark)/dark green and grey (the contested sign).

Moreover, the figurative arrangement of the letter ‘LS’ (‘IS’) device in each of the mark is different since apart of the idea of conjunction these letters in the same way, they differ in additional small blue squares on the top in the earlier mark and the dark green-square background for the letters ‘LS’ (‘IS’) in the contested sign. The ‘LS’ (‘IS’) device is also placed in a different way in each mark (on the top in the earlier mark/on the left-hand side in the contested sign). Furthermore the stylisation and the position of the lettering of the word elements in each sign differ since the words ‘LOGIMATIC’ and ‘systems’ are under the ‘LS’ (‘IS’) device in the earlier sign, and the words ‘INSA’, ‘MOTOR OILS’ are on the right hand side in the contested sign respectively.

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).

Therefore, due to the coincidence in only one verbal element ‘LS’ (‘IS’), the idea of the analogous conjunction of these letters, and the presence of few other word elements, the signs are considered visually similar to a low degree.

Aurally, the pronunciation of the signs coincides only in the sound of the letters ‘LS’ (‘IS’) present identically at the beginning in both signs. The pronunciation differs in the sound of the remaining word elements ‘LO/GI/MA/TIC’ and ‘sy/stems’ of the earlier mark and ‘IN/SA’, ‘MO/TOR OILS’ in the contested sign, which have no counterparts.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as having different word elements due to the presence of the distinctive elements ‘LOGIMATIC/‘INSA’ and the weak/non-distinctive elements ‘systems’/’MOTOR’ and/or ‘OILS’ in the earlier mark and in the contested sign respectively, the overlap in the combination of the letters ‘LS’ (’IS’)  has no bigger impact. Therefore, the signs are the same only in this coinciding combination of the letters ‘LS’ or ‘IS’.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the contested goods and services are deemed to be identical to the opponent’s services. The earlier trade mark is of normal degree of distinctiveness. The degree of attention of the relevant public is average as regards the general consumers, and may vary from average to high as the business public is concerned.

The signs have been found visually and aurally similar to a low degree only to the extent that they coincide in the verbal element ‘LS’ or ‘IS’.

Due to the presence of different distinctive word elements such as ‘LOGIMATIC’/’INSA’ in the earlier and in the contested sign respectively, only a low degree of visual and aural similarity can be established. Moreover, the signs can be further differentiated by the relevant public also by their weak/non-distinctive elements, namely ‘systems’ in the earlier mark and ‘MOTOR’ and/or ‘OILS’ in the contested signs since their presence constitute additional difference in the meaning of the signs (for part of the relevant public), but also in their lengths. A fortiori, these elements serve to differentiate the signs for the part of the public who will not attribute any meaning to them.

As mentioned above in the section c) the signs convey different meanings for various parts of the relevant public, and  as far as the conceptual aspect is concerned, the only coincidence exists due to the presence of the similar ‘LS’ (‘IS’) letter combination.

The figurative elements in the marks described in the section c) are also different. It is true that the there is a certain coincidence in the element ‘LS’/’IS’ However, the number of the word elements, their position, and finally their colouring is not the same; moreover the position of the coinciding two letters is different in each mark, being at the top in the earlier mark and on the left side in the contested sign.

Considering all the above, a likelihood of confusion does not exist since in both signs there are additional distinctive elements capable of assisting the consumers in differentiating between the signs.

For all these reasons, even assuming that the goods and services are identical, there is no likelihood of confusion on the European Union public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier right:

• Spanish trade mark registration No 3 007 218 for the figurative markfor services in Classes 35 and 39.

Since this mark is identical to the one which has been compared and cover the same services, the outcome cannot be different with respect to the goods and services for which the opposition has already been 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

Andrea VALISA	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.