FENNOTECH | Decision 2702283

OPPOSITION DIVISION
OPPOSITION No B 2 702 283
Hangzhou Zhijiang Silicone Chemicals Co., Ltd., Huangjiahe, Shushan Street,
Xiaoshan District, Hangzhou City (Zhejiang Province), People’s Republic of China
(opponent), represented by Eurochina Intellectual Property, Calle San Mateo, 65 –
Local 1 “Llopis & Asociados”, 03012 Alicante, Spain (professional representative)
a g a i n s t
Kemira Oyj, Porkkalankatu 3, 00180 Helsinki, Finland (holder), represented by
Berggren Oy, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional
representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 702 283 is upheld for all the contested goods.
2. International registration No 1 260 885 is entirely refused protection in respect
of the European Union.
3. The holder bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of international registration
No 1 260 885 designating the European Union, ‘FENNOTECH’. The opposition is
based on international trade mark registration No 1 165 940 designating European
Union, . 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

Decision on Opposition No B 2 702 283 page: 2 of 6
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a)The goods
The goods on which the opposition is based are the following:
Class 1: Plasticizers; epoxy resins, unprocessed; adhesives for industrial
purposes; adhesives for wall tiles; glue for industrial purposes; viscose; silicon;
getters [chemically active substances]; decolorants for industrial purposes; silicones.
The holder filed a request for limitation of its goods on 12/12/2016, which was
accepted by the Office.
Therefore, the contested goods are the following:
Class 1: Defoamers and de-areators for the pulp and paper industries.
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.
The holder describes defoamers and de-areators for the pulp and paper industries as
referring ‘to a narrow range of chemicals used in the pulp and paper making process.
Defoamers and de-areators are used in various stages of the pulp and paper process
to reduce the excessive foam or air produced by the process’.
The Opposition Division finds that the opponent’s silicones can be used in defoaming
pulp and paper (as argued by the opponent) and, consequently, have similar
methods of use and purpose as the contested defoamers for the pulp and paper
industries. Moreover, these goods can coincide in end users (typically the paper
industry), be manufactured by the same companies and be distributed through the
same channels. Therefore, they are deemed similar.
The contested de-areators for the pulp and paper industries may, furthermore, also
target same end users as the opponent’s silicones and decolorants for industrial
purposes, which are chemicals that are, inter alia, used in the process of making pulp
and paper. Moreover, these goods can be manufactured by the same companies and
be distributed through the same channels. Therefore, the contested goods are
deemed similar to the opponent’s silicones and/or decolorants for industrial
purposes.
b) 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 similar are directed at a specialised public
with specific professional knowledge or expertise. Due to the sophistication of the
goods and their price (e.g. deareators are deemed rather expensive) and the

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importance of choosing the right chemicals in the process of making pulp and paper,
the degree of attention is considered higher than average.
c) The signs
FENNOTECH
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 initial element of the earlier mark, ‘FINO’, will be perceived with a meaning in
parts of the relevant territory (e.g. in Italian, Spanish or Portuguese) and as
meaningless in others. Bearing this in mind, the Opposition Division finds it
appropriate to focus the comparison of the signs on the French-speaking part of the
public, for which ‘FINO’ has no meaning and that will not differentiate the signs from a
conceptual point of view.
Consequently, the initial verbal elements of the signs (‘FINO’ and ‘FENNO’) will be
perceived as meaningless; therefore, they are distinctive. The graphical
representation of the earlier mark, a black upper case font, with two horizontal lines
placed above and below the word, are banal and weak and have little influence on
the comparison on the signs.
The common element ‘TECH’ will be perceived as short for ‘technology’ and as weak
for the public under analysis.
Visually and aurally, the signs coincide in the letters ‘F*N*OTECH’ and differ in their
second letters (‘I’ and ‘E’) and that the contested sign contains an additional letter ‘N’.
Although the signs’ second letters are different, they do not create noteworthy
differences between the signs as a whole. This is also the case for the additional
letter ‘N’ of the contested sign, which will not be pronounced by the public taken into

Decision on Opposition No B 2 702 283 page: 4 of 6
consideration. Moreover, the graphical representation of the earlier mark has little
impact on the visual comparison of the signs (as explained above). Finally, the
common element, ‘TECH’, albeit weak, is placed in the same position in the signs,
increasing the signs’ visual and aural similarities. Therefore, the signs are visually
and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. The signs’ initial elements ‘FINO’ and ‘FENNO’ will
be perceived as meaningless by the public taken into consideration, whereas ‘TECH’
will be perceived as conveying the weak concept of ‘technology’. Since the signs
have a weak concept in common, they 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.
d) 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, despite the presence of a weak element in the mark, as stated above in
section c) of this decision.
e) Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or
services in question come from the same undertaking or, as the case may be, from
economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998,
C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the
public must be appreciated globally, taking into account all factors relevant to the
circumstances of the case (see Canon, § 16).
In addition, the global assessment of the risk of confusion entails certain
interdependence between the factors taken into account and, in particular, between
the similarity of the trademarks and the similarity of the goods or services covered.
Accordingly, a low degree of similarity between those goods or services may be
offset by a high degree of similarity between the marks, and vice versa (23/10/2002,
T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods are similar. The signs are conceptually similar to a low
degree for the public taken into consideration, while they are visually and aurally
similar to an average degree. It is true that the relevant public’s degree of attention is
higher than average. Nevertheless, 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).

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In its observations, the holder provided some documents showing that its trade mark
‘FENNOTECH’ has been registered in other countries, without any opposition being
filed by the opponent. The holder also makes reference to that it owns many FENNO-
registrations around the world, including in the European Union, all aimed at the
same relevant public. Moreover, the holder claims that the contested sign ‘is merely
one trademark in Kemira’s well known family of FENNO- marks.’ Consequently, the
relevant public will not confuse the contested mark with the opponent’s, but ‘rather
associate it with the other marks’ of the holder.
According to case-law, the possibility cannot be ruled out that the coexistence of two
marks on a particular market might, together with other elements, contribute to
diminishing the likelihood of confusion between those marks on the part of the
relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, §
82). In certain cases, the coexistence of earlier marks in the market could reduce the
likelihood of confusion that the Office finds between two conflicting marks (judgment
of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility
can be taken into consideration only if, at the very least, during the proceedings
before the EUIPO concerning relative grounds for refusal, the holder of an
international registration designating European Union duly demonstrated that such
coexistence was based upon the absence of any likelihood of confusion on the part
of the relevant public between the earlier marks upon which it relies and the
intervener’s earlier mark on which the opposition is based, and provided that the
earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03,
Grupo Sada, EU:T:2005:169, § 86).
In this regard it should be noted that formal coexistence in national or Union
registries of certain marks is not per se particularly relevant. It should also be proved
that they coexist in the market, which could actually indicate that consumers are used
to seeing the marks without confusing them. Last but not least, it is important to note
that the Office is in principle restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of
the coexistence of other marks in the market (and possibly in the register) at
national/Union level as an indication of ‘dilution’ of the distinctive character of the
opponent’s mark that might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis, and such an indicative value
should be treated with caution as there may be different reasons as to why similar
signs coexist, e.g. different legal or factual situations in the past, or prior rights
agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, this
argument of the holder must be rejected as unfounded.
Finally, the holder has not provided any evidence that can support its claim of
‘FENNO’ being a well known family of marks and that the contested sign is a part of
such. Therefore, these arguments must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the French-
speaking part of the public. As stated above in section c) of this decision, a likelihood
of confusion for only a part of the relevant public of the European Union is sufficient
to reject the contested application.

Decision on Opposition No B 2 702 283 page: 6 of 6
Therefore, the opposition is well founded on the basis of the opponent’s international
trade mark registration No 1 165 940 designating European Union. It follows that the
contested trade mark must be rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the holder 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Benoit VLEMINCQ Christian RUUD Anna ZIOLKOWSKA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.

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