OPPOSITION No B 2 713 298

Meffert AG Farbwerke, Sandweg 15, 55543 Bad Kreuznach, Germany (opponent), represented by Rheinpatent Kodron & Mackert, Hindenburgplatz 3B, 55118 Mainz, Germany (professional representative)

a g a i n s t

General Paint Co., Ghazir Industrial City, Ghazir, Lebanon (applicant), represented by CA Advocates, 33 Klimentos 4th Floor, Office 401, 1061 Nicosia, Cyprus (professional representative).

On 13/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 713 298 is partially upheld, namely for the following contested goods:

Class 2:        Coatings; dyes, colorants, pigments and inks; lacquers and varnishes; metal in foil and powder form; paints and washes; anti-cryptogamic protection varnishes; bitumen varnish; black japan; acid dyes; ageing products for cabinet-making dye.

2.        European Union trade mark application No 15 195 621 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 195 621. The opposition is based on European Union trade mark registration No 2 506 632. 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

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

Class 2: Paints, lacquers, preservatives against rust and against deterioration of wood, plaster.

The contested goods are the following:

Class 2: Coatings; dyes, colorants, pigments and inks; raw natural resins; lacquers and varnishes; metal in foil and powder form; paints and washes; anti-cryptogamic protection varnishes; bitumen varnish; black japan; food and beverage colorings; acid dyes; ageing products for cabinet-making dye.

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 2

Lacquers are identically contained in both lists of goods.

The contested paints are identically contained in both lists of goods.

The contested black japan is a lacquer or varnish suitable for many substrates but known especially for its use on iron and steel and it is included in the opponent´s broader category of lacquers. Therefore, they are identical.

The contested coatings include or overlap with the opponent’s lacquers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested washes refer to watery layers of paint or other colouring substance used to coat or cover. They have a close connection with the opponent´s paints as they share the same purpose, method of use, producer, distribution channels and relevant public. Therefore, they are highly similar.

The contested varnishes; anti-cryptogamic protection varnishes and bitumen varnish are similar to the opponent´s paints, as they share the same producer, end users and distribution channels.

The contested dyes, colorants, pigments and inks; acid dyes; ageing products for cabinet-making dye are products added to something else to cause a change in colour or solvents used to thin coatings, dyes and ink or to clean up after their use. They have a close connection with the opponent´s lacquers as they share the same producer, distribution channels and relevant public. Therefore, they are similar.

The contested raw natural resins are plant-derived substances used as raw or semi-processed products for various industries. Plant resins are valued for the production of varnishes, adhesives, and food glazing agents. They are also used as raw materials for the synthesis of other organic compounds and provide constituents of incense and perfume. They are dissimilar to the opponent’s goods in Class 2.

The contested metal in foil and powder form is a type of coating. It is usually used to create a hard finish that is tougher than conventional paint. Powder coating is mainly used for coating of items, such as household appliances, aluminium extrusions, drum hardware, and automobile and bicycle parts. To that extent, the goods at issue are similar to a low degree to the opponent’s paints as they can coincide in their purposes and the intended public. The channels of distribution may also be the same.

The contested food and beverage colorings are dissimilar to the opponent´s goods in Class 2. Food colouring, or colour additive, are any dye, pigment or substance that imparts colour when it is added to food or drink and they are, therefore, related to the alimentary industry. As pointed out by the applicant, the conflicting goods have different purposes, method of use and different producers. They have different distribution channels and they are neither in competition nor complementary.

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 and similar are directed at the public at large and at professionals. Some of the goods concerned are likely, by their degree of sophistication such as black japan or metal in foil and powder to be the subject of a more careful degree of attention. The degree of attention will be from average to above average.

3. The signs

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 earlier mark consists of the letters ‘PRISM’ followed by a triangle filled with the colours of the rainbow. Consumers are used to signs and words using figurative elements to represent letters, especially when the result is a known word. Here a part of the relevant public, namely Dutch, Estonian, Finnish, German, Italian, Portuguese and Spanish consumers, will perceive the word ‘PRISMA’ referring to a geometric figure whose two ends are similar, equal, and parallel rectilinear figures, and whose sides are parallelograms. The traditional geometrical shape is that of a triangular prism with a triangular base and rectangular sides, and in colloquial use "prisma" usually refers to this type. The fact that the ‘A’ is represented by a triangular representation of a prism will further reinforce this association.

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. In the present case, and bearing in mind the above paragraph, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-, Estonian-, Finnish-, German-, Italian-, Portuguese- and Spanish-speaking parts of the relevant public for which the word ‘PRISMA’ has a meaning.

The colourful blue-line throughout the letters of the earlier mark and the rainbow colours in the stylised ‘A’ have rather a decorative nature, and therefore the distinctiveness of these elements is weak in respect of pertinent goods.

The verbal element ‘Prizma’ contained in the contested sign, although misspelled, will also be associated with the geometrical shape and is also distinctive for the relevant goods. The figurative element made up of dots and a singular shape has no particular meaning in relation to the goods at hand and therefore has an average degree of distinctive character.

As the applicant pointed out in its observations of 14/12/2016, the stylization and the figurative element of the contested sign are certainly not negligible but in the Opposition Division’s opinion, they will have a rather secondary position within the sign. The applicant also argues that the figurative element contained in the contested sign is a depiction of a lens or a reflector. The representation does not seem that obvious for the Opposition Division and considers that the said device will not be given any particular meaning by the relevant consumers. Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Certainly, in this case the average consumer is likely to refer to the contested sign as ‘PRIZMA’ rather than attempt to describe the figurative element.

Moreover, due to its size and depiction in light grey, the expression ‘Paint Technology’ is barely perceptible and, therefore, is to be considered negligible in the overall composition of the mark. Since this element is likely to be disregarded by the relevant public, it will not be taken into consideration in the further assessment.

Neither of the signs has any element that could be considered more dominant eye catching) than others.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘P-R-I-*-M-A’ and differ in the different font used in each signs, in the earlier sign’s colours (which are non-distinctive components) and in the contested sign’s figurative element. Moreover, the earlier sign contains an ‘S’ versus the ‘Z’ of the contested sign

For all the above, and taking into account that given that consumers tend to pay more attention to verbal elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37), the marks are visually similar to an average degree.

The applicant emphasises the fact that the conflicting signs are visually dissimilar on account on their figurative elements and the stylisation of both marks. In order to prove it, the applicant quotes a great amount of decisions that have been thoroughly analysed by the Opposition Division. In any case, it has to be pointed out that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

In decisions of 15/12/2015, B 2 407 479, HYPER GRAND/ HYPER and of 10/05/2016, B 2 502 980, TV/TV, in these two cases, the similarities between the signs concerned only a weak element and the overall visual impression conveyed by this common element was minimal. Moreover, these cases had in common very characteristic figurative elements that were strong enough as to overshadow the verbal similarities.

In decisions of 08/04/2016, R 1313/2015 TOTAL FLOWERS/FLOWERS, decision of 17/09/2009, R-1109/2008 ip/IP and Judgement of 09/07/2003, T-156/01 GIORGIO AIRE/GIORGI LINE, decision of 12/05/2016, B 2 507 880 MONEY/MONEY TOWN, the signs had either very different structures or the figurative elements of the conflicting marks were of such importance and originality that the likelihood of confusion was clearly excluded.

In decision of 13/05/2016, B 2 474 495 G/G and of 29/04/2016, B 2 477 704, Q/Q, the signs involved were single letters that were stylised in a sufficiently different way or contained sufficiently different figurative elements to eclipse the common verbal element.

None of these conditions are fulfilled in the present case, where the verbal element of both signs is distinctive and the figurative elements, graphic differences and presentations of the textual elements are not that overwhelming or that fanciful as to create a noticeable visual difference between the signs. Therefore, it is considered that, despite the peculiar stylisation of the final letter ‘A’ and the colours in the earlier sign and the original device in the contested sign, the relevant consumer will perceive the word element ‘PRIS/ZMA’ in both signs and will use this when referring to them.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘/PRI*MA/’, present identically in both signs. The impact of the sound of letter ‘/z/’ in the contested sign is not as significant with the sound of letter ‘/s/’ included in the earlier mark.

The applicant´s argument regarding the phonetic impact of the expression ‘Paint Technology’ has to be set aside for the reasons already explained. Bearing in mind the above, 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. Therefore, the signs are conceptually similar to a high 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. 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 average.

5. Global assessment, other arguments and conclusion

The signs are visually similar to an average degree and aurally and conceptually highly similar . In the present case, the goods have been found to be identical, similar to various degrees or dissimilar.

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). Taking this principle into account when assessing the likelihood of confusion, the Opposition Division considers that the similarity between the signs compensates the low degree of similarity between some goods.

It is considered that, the differences identified in signs are insufficient to counteract the similarities. 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).

When encountering the signs at issue in relation to identical or similar goods, the public may confuse them on account of the similarity on the aural and conceptual level, including where the degree of attention is enhanced. 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 all the above and based on the average degree of inherent distinctiveness of the earlier mark, there is a likelihood of confusion and the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 2 506 632. 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 that the contested trade mark must be rejected for the goods found to be identical and similar to various degrees to those of the earlier trade mark, and bearing in mind the degree of similarity between the signs this includes those goods found similar to a low degree.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Carlos MATEO PÉREZ

Alexandra APOSTOLAKIS

Ric WASLEY

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.