OPPOSITION No B 2 304 817

Brillux GmbH & Co. KG, Weseler Str. 401, 48163 Münster, Germany (opponent), represented by Cohausz & Florack Patent – und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative)

a g a i n s t

Novol Spólka z o.o., Zabikowska 7/9, 62-052 Komorniki, Poland (applicant), represented by Kancelaria Patentowa Kazimierz Skrzypczak, ul. Mylna 52/15, 60-858 Poznań, Poland (professional representative).

On 21/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 304 817 is upheld for all the contested goods.

2.        European Union trade mark application No 12 107 363 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 12 107 363. The opposition is based on international trade mark registration No 1 037 087 ‘Spectralweiss‘ designating the European Union and German trade mark registration No 30 2009 054 145 ‘Spectralweiss‘. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

In the present case the contested trade mark was published on 21/10/2013.

Earlier German trade mark No 30 2009 054 145 was registered on 06/10/2009. Therefore, the request for proof of use is inadmissible for this earlier trade mark.

Earlier trade mark No 1 037 087 is an international registration designating the EU. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 01/04/2011. Therefore, the request for proof of use is inadmissible for this earlier trade mark as well.

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 international trade mark registration No 1 037 087 designating the European Union.

1. The goods

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

Class 2:        Paints, varnishes, lacquers; powder coatings; preservatives against rust, preservatives against deterioration of wood; primers being paints; wood protection preservatives; colorants; mordants, in particular mordants for wood; thinners for all aforementioned goods; raw natural resins; metals in foil form and metals in powder form for painters, decorators, printers and artists; mastics (puttyable paints) for smoothing and repairing a rough subsurface; coating preparations (paints) from plastic, being a paste or liquid, for surfaces made of wood and metal for protection against damp; spreadable mackle being primer.

Class 3:        Substances for laundry use and bleaching preparations, cleaning, polishing, scouring and abrasive preparations for painting and plastering; paint stripper.

Class 19:        Building materials (non-metallic, included in this class); facade mortar; plastering preparations; plaster for facing; smooth plaster; ready-mixed mortar; plaster filling agents; building lime; screed; mastics and primers (included in this class) for building; asphalt, pitch and bitumen.

The contested goods are the following:

Class 1:        Vehicle body putty.

Class 2:        Vehicle lacquers, "colour-boxes" (template with lacquer samples); vehicle body epoxy primer; lacquer fade-out thinner.

Class 7:        Vehicle lacquer mixing systems; agitators.

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 Class 1

‘Putty’ is a stiff paste used for example to fix sheets of glass into window frames or to fill cracks or holes. ‘Mastics’ are sticky putty-like substances used as a filler, adhesive or seal. It follows that the contested vehicle body putty and the opponent’s mastics (puttyable paints) for smoothing and repairing a rough subsurface in Class 19 have some points in common, namely they have the same or similar nature, purpose and method of use. They are considered to be similar to a low degree.

Contested goods Class 2

The contested vehicle lacquers, "colour-boxes" (template with lacquer samples) are included in the broad category of, or overlap with, the opponent’s lacquers. Therefore, they are identical.

The contested vehicle body epoxy primer overlaps with the opponent’s primers being paints. Therefore, they are identical.

The contested lacquer fade-out thinner is included in the broad category of the opponent’s thinners for all aforementioned goods [lacquers]. Therefore, they are identical.

Contested goods Class 7

The contested vehicle lacquer mixing systems, agitators are power-driven machines or apparatus. The former is used for mixing lacquers and the latter is used for stirring liquid (which may be paints or lacquers, for example). Comparing these goods to the opponent’s lacquers in Class 2, it is apparent that despite their different nature the goods can target the same public (car producers or car repair establishments), they can be used for the same general purpose (lacquering a vehicle) and can be complementary (since the use of the contested mixing systems and agitators is important for using the opponent’s lacquers on an industrial or business scale). These goods are considered to be similar to a low degree.

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 found to be identical or similar to a low degree are directed predominantly at business customers with specific professional knowledge or expertise. The degree of attention will be high because the right choice of the products is important for the running of the relevant consumer’s business.

3. The signs

Spectralweiss
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘weiss’ is meaningful in certain territories, namely in those countries where German is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public in the EU, such as the public in Austria and Germany.

As regards the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). In this case, the earlier trade mark will be perceived as being composed of two meaningful elements, ‘Spectral’ and ‘weiss’.

The element ‘SPECTRAL’ included in both marks means ‘of or relating to (colour) spectrum’. It is an English word whose equivalent in German (‘spektral’) is quite close. However, despite the above meaning, it is considered that the word ‘SPECTRAL’ on its own is not directly descriptive for the relevant goods and that it has a degree of distinctiveness, albeit low (since it refers to the full spectrum of colours).

The element ‘weiss’ at the end of the earlier trade mark will be perceived in the context of the relevant goods by German-speaking consumers as ‘white’ (because ‘weiss’ is a natural equivalent of the German word ‘weiß’ meaning ‘white’). Since ‘white’ is one of the most basic colours, and the relevant goods all have to do with colours, this element is considered to be non-distinctive.

The element ‘COLOR TECHNOLOGY’ of the contested sign is a phrase consisting of basic English words meaning ‘technology relating to colours’ that will be understood by the relevant public. Bearing in mind that all the relevant goods relate essentially to colours, this element is non-distinctive for all the contested goods.

The black rectangular background and the red stripe in the contested sign are basic geometrical shapes in common colours that play only a decorative role. Therefore, these figurative elements are very weak, if not non-distinctive.

Bearing in mind the above findings, the common element ‘SPECTRAL’ is the most distinctive element in both trade marks.

The element ‘SPECTRAL’ in the contested sign is the dominant element as it is the most eye-catching.

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.

The fact that the earlier trade mark is depicted in title case and the verbal elements of the contested sign in upper case has no bearing on the comparison of the marks, because the earlier mark is a word mark. Protection is therefore granted for the word itself, and not for the particular way in which the mark is written.

Visually, the signs coincide in the element ‘SPECTRAL’ (except for the slight stylisation of script in the contested sign) which is the most distinctive element in both marks. It is also the most dominant element within the contested sign. The marks differ in all the remaining elements, namely the element ‘weiss’ of the earlier trade mark and the phrase ‘COLOR TECHNOLOGY’, the figurative elements and the stylisation of the script of the contested sign. However, all these elements are either weak or non-distinctive or are quite small which means that their impact is substantially reduced.

On the whole, the signs are considered to be visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SPECTRAL’, present identically in both signs. The pronunciation differs in the sound of the letters ‛WEISS’ of the earlier sign, which have no counterparts in the contested mark. However, the element ‘weiss’ was considered non-distinctive. The phrase ‘COLOR TECHNOLOGY’ in the contested sign will most probably not be pronounced when referring to that sign aurally due to its small size and non-distinctive character.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning of the weak element ‘SPECTRAL’ and, different meanings are conveyed by the additional non-distinctive elements ‘weiss’ and ‘COLOR TECHNOLOGY’, the marks are conceptually similar to a low degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the relevant goods.

5. Global assessment, other arguments and conclusion

The goods are partially identical and partially similar to a low degree. The earlier trade mark’s degree of distinctiveness is low and the degree of attention of the relevant public will be high.

The marks are visually similar to an average degree, aurally similar to a high degree and conceptually similar to a low degree on account of the coinciding element ‘SPECTRAL’. This element will be perceived as a separate distinctive element of the earlier trade mark because the relevant German-speaking public will break down the earlier mark into two meaningful words, ‘SPECTRAL’ and ‘WEISS’. The element ‘SPECTRAL’ is, despite its weak distinctiveness, the most distinctive element of the earlier trade mark because the remaining element, ‘WEISS’, is non-distinctive. Furthermore, the element ‘SPECTRAL’ is placed in the prominent position at the beginning of the mark. As far as the contested sign is concerned, the coinciding element ‘SPECTRAL’ is the most distinctive and dominant element of the sign.

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).

All in all, it is considered that the marks are sufficiently similar to cause confusion for the goods that have been found identical and similar to a low degree. In essence, there is a likelihood of confusion because the marks coincide in the element ‘SPECTRAL’ and the differences between the signs are confined to non-distinctive or secondary elements and aspects.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The applicant argues that the goods should be held dissimilar because the marks are effectively used on the market for different types of goods. However, the task of the Opposition Division is to compare the goods as they appear in the respective lists of goods and it cannot limit itself to comparing only the goods for which the marks are allegedly used on the market. Consequently, the applicant’s argument must be dismissed.

The applicant also argues that it owns EUTM No 4 558 111 ‘SPECTRAL’ which is even earlier than the earlier IR No 1 037 087. At the moment of the registration process of IR No 1 037 087 designating EU, the applicant considered that the marks could peacefully co-exist and refrained from filing an opposition against this IR. In addition, the applicant claims that it owns two other EUTMs containing the element ‘SPECTRAL’. The Opposition Division considers that these arguments are not persuasive of lack of confusion in the present case. In these proceedings, the earlier IR No 1 037 087 designating EU has the standing of an earlier trade mark in accordance with Article 8(2) EUTMR vis-à-vis the contested EUTM application No 12 107 363. This cannot be put into question merely by the existence of an even earlier EUTM ‘SPECTRAL’ of the applicant. The applicant’s own commercial assessment that the two marks can co-exist on the market does not preclude the Opposition Division from finding that from the legal point of view based on Article 8(1)(b) EUTMR, there is a likelihood of confusion between the marks in the present dispute.

Furthermore, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Consequently, the applicant’s arguments must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. 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 international trade mark registration No 1 037 087 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the above-mentioned earlier right 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 right 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

Saida CRABBE

Vít MAHELKA

Lucinda CARNEY

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.