OPPOSITION No B 2 711 599
Omya AG, Baslerstrasse 42, 4665 Oftringen, Switzerland (opponent), represented by Isarpatent – Patent- Und Rechtsanwälte Behnisch Barth Charles Hassa Peckmann & Partner MBB, Friedrichstrasse 31, 80801 München, Germany (professional representative)
a g a i n s t
Drp Group Przemysław Miśkiewicz i Wspólnicy Spółka Jawna, Chemiczna 6, 42-520 Dąbrowa Górnicza, Poland (applicant), represented by Monika Błaszczyk, Ul. Gen. W. Andersa 15/407, 41-200 Sosnowiec, Poland (professional representative).
On 12/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 711 599 is upheld for all the contested goods.
2. European Union trade mark application No 15 008 584 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 008 584. The opposition is based on European Union trade mark registration No 8 271 702. 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 goods
The goods on which the opposition is based are, inter alia, the following:
Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; minerals, processed and unprocessed; carbonates, in particular calcium carbonate, magnesium carbonate and sodium bicarbonate; kaolins; silicates; talc (magnesium silicate); unprocessed plastics; chemicals for the manufacture of paints; dolomite for industrial purposes; manures; calcium cyanamide (fertilizer); glazier's putty; textile impregnating and finishing chemicals; fireproofing preparations; unprocessed plastics in the form of powders, liquids or pastes, tanning agents; mineral filler materials for use in industry.
Class 17: Sealing compounds and sealing preparations; sealant compounds for joints; semi-processed plastic substances; rubber, raw or semi-worked; mica, raw or partly processed.
The contested goods are the following:
Class 1: Unprocessed plastics; plastics in the form of granules; raw plastics in the form of granules; raw plastics in the form of pellets; plastic in the form of granules for use in industry.
Class 17: Injection moulding plastics; plastics in extruded form for use in manufacture; plastics in extruded form for use in manufacture; recycled plastics; semi-processed plastics; extruded plastics [semi-finished products]; extruded plastics in the form of granules for manufacturing purposes.
Contested goods in Class 1
Unprocessed plastics are identically contained in both lists of goods.
The contested plastics in the form of granules; raw plastics in the form of granules; raw plastics in the form of pellets; plastic in the form of granules for use in industry are included in the broad category of, or overlap with, the opponent’s unprocessed plastics. Therefore, they are identical.
Contested goods in Class 17
The contested injection moulding plastics; plastics in extruded form for use in manufacture; plastics in extruded form for use in manufacture; recycled plastics; semi-processed plastics; extruded plastics [semi-finished products]; extruded plastics in the form of granules for manufacturing purposes are included in the broad category of, or overlap with, the opponent’s semi-processed plastic substances in Class 17. Therefore, they are identical.
- 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 are directed at professionals with specific knowledge or expertise in the chemical industry.
The relevant public will display a high degree of attention when purchasing the goods at issue, since they are highly specialised goods that imply a high degree of sophistication and professional knowledge on the part of the consumers.
- The signs
|
OMYA
|
OMIAMID
|
|
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 marks are both word marks, consisting of the word ‘OMYA’ in the earlier mark and the word ‘OMIAMID’ in the contested sign.
According to settled case-law it has to be taken into account that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
Consequently, as the applicant argues, in the case of the contested sign, the relevant professional public (or at least part of it) will break the element ‘OMIAMID’ into two separate components, ‘OMI’ and ‘AMID’.
The first component ‘OMI’ is, despite of the applicant’s arguments, meaningless in relation to the goods in question as it is unlikely that the relevant public will associate this word with the acronym made of the Polish names Ola and Miłosz. Therefore, this part is considered distinctive.
The second component, ‘AMID’, refers to an English term ‘amide’, an additive used in the plastic industry. In some languages in the relevant territory, there is the equivalent word ‘amid’ used for these additives (for example in Czech, Danish, German, Hungarian, Norwegian, Polish or Slovak). Bearing in mind the relevant professional public who is specialised in buying plastics and due to the equivalences in other languages in the relevant territory, the Opposition Division considers that this part of the contested sign will be understood in the whole relevant territory. Since amides are the necessary compounds of some types of plastic materials, the Opposition Division considers the component ‘AMID’ to be weak in relation to the goods in question.
Visually, the signs coincide in the letters ‘OM*A(***)’ placed in the same position and order in both marks. The marks differ in the remaining letters.
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. In the present case, the marks coincide in their beginnings, OM*A, which is part of the more distinctive component of the contested sign. Moreover, the difference in the letters ‘Y’ and ‘I’ is, due to their position in the middle of the signs, likely to be overlooked by the relevant consumers. In addition, as it was noted above, the component of the contested sign, ‘AMID’, is considered to be weak in relation to the relevant goods and therefore it has only little impact on the comparison of the signs.
Therefore, the signs are visually similar to an average degree.
Aurally, taking into account that the letters 'Y' and 'I' will be pronounced identically in some languages of the relevant territory, at least, (for instance in French, Spanish, Portuguese and Italian), the pronunciation of the signs coincides in their beginnings, ’OMYA’ and ‘OMIA’ for part of the public at least. Conversely, the marks differ at least in the sound of the additional letters ‘MID’ of the contested sign, placed at the end of the weak component of the contested sign.
Therefore, the signs are aurally similar to a high degree.
Conceptually, ‘OMYA’ and ‘OMI’ have no clear or unambiguous meaning for the public in the relevant territory. The additional component of the contested sign, ‘AMID’, will be associated with the abovementioned meaning. However, this element is considered weak and therefore it has only little impact on the comparison of the signs.
In any case, since only one of the signs will evoke a concept, the marks are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case the contested goods are identical to the opponent’s goods and they target the professional public. The degree of attention in relation to the goods in question is high. The marks were found to be visually similar to an average degree, aurally similar to a high degree and conceptually not similar.
Account is also 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).
Considering the above and the fact that the main differences between the signs lie in the respective letters 'Y' and 'I', placed in the middle of the signs where they are more likely to be overlooked by consumers, and in the last three letters of the component 'AMID' of the contested sign which has only little impact on the relevant public and on the comparison of the signs, it is highly conceivable that the relevant consumer will perceive that the goods at issue marked with the signs in conflict come from the same undertaking or from economically linked undertakings. This finding is also reinforced by the fact that the beginnings of the marks are the same, the pronunciation of the signs is, apart from the weak ending of the contested sign, identical for a significant part of the relevant public and the goods were found to be identical.
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).
Therefore, taking into account that all the goods under comparison are identical, it is considered that the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers.
It remains necessary to consider the applicant’s argument that the contested trade mark belongs to a group of family marks, all characterised by the presence of the same word component ‘OMI’ (‘OMID’, ‘OMILEN’, ‘OMIREN’, ‘OMILAN’, ‘OMILON’, ‘OMIBLEND’, ‘OMIDUR’, ‘OMIFORM’), which is not present in the earlier mark ‘OMYA’, and therefore it considers that the marks will not be associated with each other.
As regards this argument, the Opposition Division notes that 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. The Office is restricted in its examination to the trade marks in conflict. Therefore, the applicant’s argument must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 271 702. It follows that the contested trade mark must be rejected for all the contested goods.
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
|
Adriana Pieternella |
Begoña |
Boyana |
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.