OPPOSITION No B 2 648 569

Lausitz Energie Bergbau AG, Vom-Stein-Str. 39, 03050 Cottbus, Germany (opponent), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative)

a g a i n s t

SunCoal Industries GmbH, Rudolf-Diesel-Str. 15, 14974 Ludwigsfelde, Germany (applicant), represented by Maikowski & Ninnemann Patentanwälte Partnerschaft mbB, Kurfürstendamm 54-55, 10707 Berlin, Germany (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 648 569 is partially upheld, namely for the following contested goods and services:

Class 4:        Illuminants; electrical energy; lubricants and industrial greases, waxes and fluids; additives in connection with the aforesaid goods, included in this class.

Class 42:        Science and technology services; testing, authentication and quality control; design services; consultancy and information in relation to the aforesaid services, included in this class.

2.        European Union trade mark application No 14 674 832 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 674 832. The opposition is based on European Union trade mark registration No 12 411 781. 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 and services

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

Class 4:        Products made of lignite, namely combustible briquettes, powdered lignite, lignite for fluidised combustion, selected parts of lignite for use as fuel.

Class 39:        Transport of goods consisting of combustible briquettes by rail, road or water; Transport of lignite for fluidised combustion and powdered lignite in containers by rail and road; Distribution of energy carriers; Supply of electricity; Distribution of water; Distribution of gas.

Class 42:        Know-how, consultancy in the field of energy, providing expert advice in the field of energy.

Class 45:        Commercial exploitation of scientific and technical results and progress in the energy sector, namely by means of licences.

The contested goods and services are the following:

Class 1:        Filtering media of chemical and non-chemical substances included in the class; Chemical preparations and materials for film, photography and printing; Unprocessed plastics; Adhesives used in industry; Fertilisers, and chemicals for use in agriculture, horticulture and forestry; Detergents for use in manufacture and industry; Chemical substances, chemical materials and chemical preparations, and natural elements; Salts for industrial purposes; Unprocessed and synthetic resins; Starches for use in manufacturing and industry; Putties, and fillers and pastes for use in industry.

Class 4:        Illuminants; Electrical energy; Dust controlling compositions; Lubricants and industrial greases, waxes and fluids; Additives in connection with the aforesaid goods, included in this class.

Class 17:        Unprocessed and semi-processed materials, not being designed for a specific use, included in this class, namely polyesters, mineral fibres, extruded plastics (semi-finished products), semi-processed plastics, elastomers, fibres impregnated with artificial resins; Synthetic and composite materials, namely carbon fibres, cellulose acetate, fibreglass and glass wool, cast nylon for use in manufacture, chemical fibres, not for textile use, synthetic fibres, other than for textile use, viscose sheets, other than for wrapping; Finished or semi-finished products, being designed for a specific use, included in this class, namely semi-processed plastics for injection moulding, shock absorbing and packaging materials, vibration dampers, sealing foils and semi-processed synthetic filter materials; Parts and accessories for all the aforesaid goods, included in this class.

Class 42:        Science and technology services; Testing, authentication and quality control; Design services; Consultancy and information in relation to the aforesaid services, included in this class.

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

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 1

The contested filtering media of chemical and non-chemical substances included in the class; chemical preparations and materials for film, photography and printing; unprocessed plastics; adhesives used in industry; fertilisers, and chemicals for use in agriculture, horticulture and forestry; detergents for use in manufacture and industry; chemical substances, chemical materials and chemical preparations, and natural elements; salts for industrial purposes; unprocessed and synthetic resins; starches for use in manufacturing and industry; putties, and fillers and pastes for use in industry are dissimilar to the opponent’s goods in Class 4 and services in Classes 39, 42 and 45.

The contested goods consist of very specific goods, for instance filtering media of chemical and non-chemical substances included in the class, salts for industrial purposes; adhesives used in industry; unprocessed and synthetic resins and chemical substances and preparations (for example, chemical substances, chemical materials and chemical preparations, and natural elements and fertilisers, and chemicals for use in agriculture, horticulture and forestry). It should be noted that the opponent restricted the scope of protection in Class 4 by adding the word ‘namely’. Therefore only combustible briquettes, powdered lignite, lignite for fluidised combustion, selected parts of lignite for use as fuel (products made of lignite) are protected. These goods are for fuel purposes. The goods under comparison do not serve the same purpose and do not target the same public. They usually differ in their producers and they do not have the same distribution channels. They are neither complementary nor in competition. The same concerns the goods and services under comparison. In addition, the contested goods and the opponent’s services have a different nature.

Contested goods in Class 4

As was previously indicated, the opponent restricted the scope of protection in Class 4 by adding the word ‘namely’. Therefore only combustible briquettes, powdered lignite, lignite for fluidised combustion, selected parts of lignite for use as fuel (products made of lignite) are protected. These goods are for fuel purposes.

The contested illuminants; electrical energy; additives in connection with the aforesaid goods, included in this class are similar to the opponent’s Class 4 combustible briquettes, powdered lignite, lignite for fluidised combustion, selected parts of lignite for use as fuel (products made of lignite), as they have the same purpose. They can coincide in end user and distribution channels. Furthermore, they are in competition.

The contested lubricants and industrial greases, waxes and fluids; additives in connection with the aforesaid goods, included in this class are similar to a low degree to the opponent’s Class 4 combustible briquettes, powdered lignite, lignite for fluidised combustion, selected parts of lignite for use as fuel (products made of lignite), as they can coincide in producer and distribution channels.

The contested dust controlling compositions; additives in connection with the aforesaid goods, included in this class are dissimilar to the opponent’s goods in Class 4 and services in Classes 39, 42 and 45. These goods and the opponent’s goods do not serve the same purpose and do not target the same public. They usually differ in their producers and do not have the same distribution channels. Additionally, they are neither complementary nor in competition. The same concerns these goods and the opponent’s services, which also have a different nature.

Contested goods in Class 17

The contested unprocessed and semi-processed materials, not being designed for a specific use, included in this class, namely polyesters, mineral fibres, extruded plastics (semi-finished products), semi-processed plastics, elastomers, fibres impregnated with artificial resins; synthetic and composite materials, namely carbon fibres, cellulose acetate, fibreglass and glass wool, cast nylon for use in manufacture, chemical fibres, not for textile use, synthetic fibres, other than for textile use, viscose sheets, other than for wrapping; finished or semi-finished products, being designed for a specific use, included in this class, namely semi-processed plastics for injection moulding, shock absorbing and packaging materials, vibration dampers, sealing foils and semi-processed synthetic filter materials; parts and accessories for all the aforesaid goods, included in this class are dissimilar to the opponent’s goods in Class 4 and services in Classes 39, 42 and 45.

As was stated above, the opponent restricted the scope of protection in Class 4 by adding the word ‘namely’. Therefore only combustible briquettes, powdered lignite, lignite for fluidised combustion, selected parts of lignite for use as fuel (products made of lignite) are protected. These goods are for fuel purposes. By contrast, the contested goods in Class 17 are not for fuel purposes. Therefore, the goods under comparison do not serve the same purpose and they also do not target the same public. They usually differ in their producers and they do not have the same distribution channels. They are neither complementary nor in competition. The same applies to the goods and services under comparison. In addition, the contested goods and the opponent’s services have a different nature, since services are intangible whereas goods are tangible.

Contested services in Class 42

The contested science and technology services; testing, authentication and quality control; design services; consultancy and information in relation to the aforesaid services, included in this class include, as broader categories, or overlap with, the opponent’s Class 42 know-how, consultancy in the field of energy, providing expert advice in the field of energy. The contested services promote the development of technologies and resources in industrial fields. These activities are aimed at the acquisition of new knowledge with the objective of using it for developing new products, processes or services or for bringing about a significant improvement in existing products, processes or services.

Therefore, the services at issue may all be provided in relation to the same specialised scientific, technological and/or industrial field, such as the energy production sector. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

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 found to be identical or similar (to different degrees) are directed at the public at large and the professional public.

The degree of attention is considered to vary from average to above average, given the specialized technical nature of some of the goods and services in question.

3. The signs

LignoPlus	LIGNOCARB
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements composing the signs are meaningful in certain territories. As such, in those territories, the public may dissect the verbal elements of the signs and attribute certain meanings to some or all of them. This may affect the distinctiveness of those elements, for the part of the public that will understand their meaning.

However, a considerable part of the public in the relevant territory will not see any meaningful element in the verbal elements under comparison and, consequently, will not proceed with an artificial dissection of the same, but will rather perceive them as a whole, i.e., as one fanciful word element. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on that part of the public such as, for example, the Bulgarian-speaking part of the public in the EU.

Both the contested sign and the earlier mark are word marks and therefore it is immaterial whether the elements are written in upper or lower-case letters, given that in the case of word marks, it is the word as such that is protected, regardless of its written form.

Visually, the signs coincide in the sequence of letters ‘LIGNO-’, which are the first five letters (out of nine) of the earlier mark ‘LignoPlus’ and the first five letters (out of nine) of the contested sign ‘LIGNOCARB’. The signs differ in their respective final four letters ‘-Plus’ of the earlier right and ‘-CARB’ of the contested sign.

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. Therefore, considering the coincidence in the initial part of the marks and their identical proportions (a nine letter long meaningless term), the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter string ‘LIGNO-’, present identically in the beginning of both signs. The pronunciation differs in the sound of the final four letters ‘-Plus’ of the earlier right and ‘-CARB’ of the contested sign.

It is noted that the signs have the same aural length and structure (three syllables), with the first two syllables completely coinciding (LIG-NO). They only differ in their final syllable. Thus, the initial phonetic parts of the signs are identical, which, as was previously stated, is important, given that consumers tend to focus on the beginning of a sign. Consequently, the signs are aurally similar to an average degree.

Conceptually, as was referred above, neither of the signs has a meaning for the Bulgarian-speaking 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 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.

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).

As has been concluded above, some of the contested goods and services are identical or similar (to different degrees) and the signs are visually and aurally similar to an average degree, while conceptually neither has a meaning for the part of the relevant public on which the comparison of signs is based.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In the present case, the signs under comparison identically share their initial five letter sequence. This is particularly important given that 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.

Therefore, the difference in the final letters of the marks is not enough to clearly set them apart, also taking into consideration their identical length (both signs are composed of a meaningless nine-letter long term) and aural structure (both are pronounce in three syllables, the first two of which coincide identically). Therefore, it is likely that consumers with an imperfect recollection of the earlier mark will confuse the signs in relation to identical and similar goods and services.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the prefix ‘LIGNO-’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the prefix ‘LIGNO-’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-speaking public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 411 781. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to different degrees) to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Dorothée SCHLIEPHAKE

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.