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

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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

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: 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

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

Decision on Opposition No B 2 702 283 page: 3 of 6

importance of choosing the right chemicals in the process of making pulp and paper,

the degree of attention is considered higher than average.

FENNOTECH

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

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

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

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.

services in question come from the same undertaking or, as the case may be, from

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

offset by a high degree of similarity between the marks, and vice versa (23/10/2002,

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

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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

relevant public will not confuse the contested mark with the opponent’s, but ‘rather

associate it with the other marks’ of the holder.

likelihood of confusion that the Office finds between two conflicting marks (judgment

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.

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.

‘FENNO’ being a well known family of marks and that the contested sign is a part of

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

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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.

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the

representation, which are to be fixed on the basis of the maximum rate set therein.

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

deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)

EUTMR) has been paid.