OPPOSITION No B 2 065 210

Evonik Degussa GmbH, Rellinghauser Str. 1-11, 45128 Essen, Germany (opponent), represented by Roland Weiß, Rodenbacher Chaussee 4, 63457 Hanau-Wolfgang, Germany (professional representative)

a g a i n s t

Basic & Co. SRL, Via ai Pini 20, 36034 Malo (VI), Italy (applicant), represented by Luppi Crugnola & Partners S.R.L., Viale Corassori 54, 41124 Modena, Italy (professional representative)

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 065 210 is partially upheld, namely for the following contested goods:

Class 1:         Chemicals used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 17:         Rubber, gutta-percha, gum; plastics in extruded form for use in manufacture.

2.        European Union trade mark application No 10 790 749 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 10 790 749 for the word mark ‘AEROSILEX’. The opposition is based on the following word marks 1) European Union trade mark registration No 615 757 ‘AEROSIL’, 2) European Union trade mark registration No 465 559 ‘AEROPERL’, 3) international registration designating the European Union No 1 074 887 ‘AERODISP’, 4) international registration designating the European Union No 1 002 647 ‘AEROBATCH’, 5) German trade mark registration No 30 711 668 ‘AEROQUAM’ and 6) German trade mark registration No 30 254 856 ‘AEROXIDE’. 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 1) European Union trade mark registration No 615 757 ‘AEROSIL’, 2) European Union trade mark registration No 465 559 ‘AEROPERL’, 5) German trade mark registration No 30 711 668 ‘AEROQUAM’ and 6) German trade mark registration No 30 254 856 ‘AEROXIDE’ on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 05/06/2012. The opponent was therefore required to prove that these four trade marks on which the opposition is based were put to genuine use in the European Union and Germany respectively from 05/06/2007 to 04/06/2012 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based which all concern Class 1.

For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the proof of use concerning European Union trade mark registration No 615 757 ‘AEROSIL’. In the case of this earlier mark, it is based on the following goods:

Class 1: Finely separated silicic acid for use as filling materials for rubber and rubber substitute materials, chemicals for thickening liquids for oils and gel type fatty substances, chemicals for thickening liquids for acids and stripping pastes, chemicals for thickening liquids for paints and lacquers, chemicals for thickening liquids for cosmetic and pharmaceutical preparations, including water for toothpaste, and for making alcoholic and non-alcoholic beverages, finely separated silicic acid for preventing the formation of lumps and for aiding pourability.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 13/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 18/09/2016 to submit evidence of use of the earlier trade marks. Upon a request filed by the opponent, this deadline was extended until 18/11/2016. On 18/11/2016, within the time limit, the opponent submitted evidence of use.

For the sake of clarity, the Office did not formally request the opponent to furnish proof of use of its earlier German trade mark registration No 30 254 856 ‘AEROXIDE’ within this time limit. In view of this, the adversarial part of the proceedings should be re-opened and the opponent should be formally requested, in accordance with Article 42(2) and (3) EUTMR, to furnish proof of use of this earlier mark as well, as requested by the applicant, within a time limit to be set by the Office. However, the opposition is based on other earlier marks and, for reasons of procedural economy, the Opposition Division finds it unnecessary to re-open the proceedings and to examine the opposition on the basis of this earlier mark (see further comments below in section g) Conclusion and other arguments).

The evidence submitted by the opponent to prove use is the following:

• Item1: extracts in German from a lexicon called ‘DEUTSCHES MARKENLEXIKON’ providing information about the trade mark ‘AEROSIL’ with a copyright date indicated of 2007. The opponent indicates in its observations that the lexicon entry gives an overview about the history of  ‘AEROSIL’ products, invented in 1942 and registered as a trade mark in 1943, and that the estimated advertising costs for ‘AEROSIL’ is indicated on page 36 as being 3 million euros.

• Item2: a copy of a brochure in English dated October 2004 with a product overview of the trade mark ‘AEROSIL’. The brochure indicates, inter alia, that ‘AEROSIL’ is a fumed silica sold in different grades, such as ‘AEROSIL 130’, ‘AEROSIL 150’, ‘AEROSIL 200’, ‘AEROSIL 300’, ‘AEROSIL OX 50’, ‘AEROSIL TT 600’, ‘AEROSIL R 972’, ‘AEROSIL R 974’, ‘AEROSIL R 106’, ‘AEROSIL R 202’, ‘AEROSIL R 805’, ‘AEROSIL MOX 80’ and ‘AEROSIL COK 84’. The brochure also includes a table with a list of applications of the different ‘AEROSIL’ products or grades and indicates that one or various of the grades referred to above can be applied in one or various of the fields of: adhesives, catalysts, coatings, cosmetics/personal care, defoamers, elastomers, food, glass, inks, lubricants/cable gels, silicon wafer polishing, lighting, pesticides, pharmaceuticals, plastics, plastisols, toners, liquid resins, sealants, silicones, thermal insulation, batteries, battery gel and ceramics.

• Item3: a copy of a brochure in English dated October 2013 with a product overview of the trade mark ‘AEROSIL’. This brochure also indicates that ‘AEROSIL’ is a fumed silica sold, inter alia, in the different grades mentioned above. The brochure also features the below pictures of ‘AEROSIL’ product packaging:

• Item4: a copy of a brochure in English dated December 2008 with an overview of the trade mark ‘AEROSIL’ for silicone rubber. This brochure includes a table listing, inter alia, the following different ‘AEROSIL’ grades as being applicable to silicone rubber and silicone sealants: ‘AEROSIL 150’, ‘AEROSIL 200’, ‘AEROSIL 300’, ‘AEROSIL R 972’ and ‘AEROSIL R 106’. The brochure also features the below pictures of ‘AEROSIL’ product packaging and bulk container:

• Item5: a copy of a brochure in English dated January 2012 with an overview of the trade mark ‘AEROSIL’ for use in adhesives and sealants. The brochure includes a table indicating that, inter alia, the following ‘AEROSIL’ grades are applicable to different adhesives: ‘AEROSIL 200’, ‘AEROSIL 300’, ‘AEROSIL 380’, ‘AEROSIL R 202’, ‘AEROSIL R 805’ ‘AEROSIL R 972’, ‘AEROSIL R 974’ and ‘AEROSIL COK 84’ and, inter alia, the following ‘AEROSIL’ grades are applicable to different sealants: ‘AEROSIL 130’, ‘AEROSIL 150’, ‘AEROSIL 200’, ‘AEROSIL 300’, ‘AEROSIL 380’, ‘AEROSIL R 106’, ‘AEROSIL R 202’, ‘AEROSIL R 805’, ‘AEROSIL R 972’ and ‘AEROSIL R 974’.

• Item6: a copy of a brochure in English dated July 2015 with an overview of, inter alia, the trade mark ‘AEROSIL’ for use in the construction materials industry. The brochure includes a table indicating that, inter alia, the following ‘AEROSIL’ grades: ‘AEROSIL 90’, ‘AEROSIL 130’, ‘AEROSIL 200’, ‘AEROSIL R 202’ and ‘AEROSIL R 972’ are recommendable for application in one or more of the following fields related to the construction materials industry: concrete, dry cement-based mixture, silicate plaster, plaster, lime mortar, dry mortar, RDPs, admixtures and water resistance.

• Item7: nine invoices, one from each year between 2008 and 2016. The invoices concern sales of the following ‘AEROSIL’ products: ‘AEROSIL 150’, ‘AEROSIL R 972’, ‘AEROSIL 200’, ‘AEROSIL TT 600’ and ‘AEROSIL 9200’ and all invoices show sales of various tonnes of products (ranging from between around 4.000-5.000kg each). The prices have been masked but are indicated in euros. Some of the invoices are in Spanish and others in German but the customer information has been masked, including addresses and countries (which the exception of one invoice from 2015 that shows ‘España’). However, the invoices indicate that the goods originate from either Belgium or Germany.

• Item8: 19 invoices addressed to one customer in Italy from the years between 2007 and 2012. The invoices concern sales of the following ‘AEROSIL’ products: ‘AEROSIL 150’, ‘AEROSIL 200’, ‘AEROSIL 200 Pharma’ ‘AEROSIL 300’, ‘AEROSIL 380’, ‘AEROSIL R 812’ ‘AEROSIL R 972’, ‘AEROSIL R 974’, ‘AEROSIL MOX 80’, ‘AEROSIL 130’, ‘AEROSIL R 106’, ‘AEROSIL 805’, ‘AEROSIL 90’, ‘AEROSIL R 202’, ‘AEROSIL OX 50’ and ‘AEROSIL COK 84’ and show yearly sales of various tonnes of products (ranging from between around 7.000-12.000kg per year).

• Item9: nine invoices, one from each year between 2008 and 2016 concerning sales of ‘AEROPERL’ products.

Place

As regards the place of use, although the customer information has been masked in the invoices submitted in Item 7, they indicate that the goods originate from either Belgium or Germany as outlined above. According to Article 15(1), second subparagraph, point (b) EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes. The evidence shows that the goods originated from Belgium and Germany and thus shows that the goods were, at least, exported from the relevant territory. Moreover, the invoices submitted in Item 8 were addressed to a customer in Italy and therefore also concerns the relevant territory.

Consequently, the evidence of use filed by the opponent contains sufficient indications concerning the place of use in the relevant territory.

Time

The brochures submitted in Items 4 and 5 respectively concern the years 2008 and 2012 and the majority of the invoices submitted in Items 7 and 8 concerns all the years of the relevant time period, namely 2007-2012 and therefore provide sufficient information concerning the time of use.

Extent

In relation to the extent of use, the applicant argues that the amount of ‘AEROSIL’ products sold is very low if compared to the potential consumers and target markets of the goods for which the earlier mark is registered and that there is no explanation as to the possible reasons for which the product was sold only in one country and to a single client. It further argues that since the opponent indicates on its website, www.aerosil.com, that the global annual production capacity for precipitated and fumed silica, metal oxides and matting agents now exceeds 550.000 tonnes, the yearly sales shown through the invoices submitted correspond to 0,003% of the sales which, in its view, is clearly a token quantity for the specific sector under examination.

In this respect, the Opposition Division notes first of all that, according to the information given by the applicant itself, the global production capacity is held to exceed 550.000 tonnes a year which does not mean that the opponent actually sells 550.000 tonnes of products every year and even less within the European Union only. Moreover, the production capacity referred to does not only relate to the production of ‘AEROSIL’ products and does therefore not give any particular information concerning the opponent’s total volume of annual sales of such goods. As a result, it cannot be inferred from the information relied on by the applicant that the invoices submitted only show 0,003% of the opponent’s annual sales of ‘AEROSIL’ products in the relevant territory.

Although the concept of genuine use excludes all minimal and insufficient use as the basis for a finding that a mark is being put to real and effective use on a given market, the requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (16/06/2015, T-660/11, EI du Pont de Nemours (POLYTETRAFLON), ECLI:EU:T:2015:387, § 44).

There is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C 40/01, Minimax, EU:C:2003:145, and 12/03/2003, T 174/01, Silk Cocoon, EU:T:2003:68).

In this respect, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa.

The invoices submitted in Items 7 and 8 show that the opponent has sold at least 10-15 tonnes of different ‘AEROSIL’ products every year during the relevant time period between 2007 and 2012 and not only to one client in Italy but also to clients in other countries (as shown by the invoices in Spanish and German in Item 7). Moreover, the applicant argues that the invoices falling outside the relevant time period cannot be taken into account. While it is true that evidence referring to use made outside the relevant timeframe should generally be disregarded, events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50). Therefore, the invoices submitted concerning the time period between the second half of 2012 and 2016 may also assist to infer that the invoices submitted concerning the whole of the relevant time period does not show only token use for the sole purpose of preserving the rights conferred by the earlier mark but rather supports that the use has been genuine in order to create or preserve an outlet for the goods in the market.

Although the evidence concerning the extent of use could have been more exhaustive, use of the mark need not be quantitatively significant for it to be deemed genuine.  Since the evidence shows continuous use of the mark over a long period of time for a not insignificant amount of products sold, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

Consequently, taking into account the evidence in its entirety, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

Nature of use

The invoices and brochures show use of the earlier mark as registered or in a form that does not alter its distinctive character (as shown in the picture reproduced above included in Item 4 of the ‘AEROSIL 200’ product packaging). Therefore, the use of the earlier mark is in accordance with the provisions laid down by Article 15(1)(a) EUTMR.

The applicant argues that there is no indication or reference present in the invoices regarding the specific articles referred to and that it can therefore not be concluded that the earlier mark was actually used for one or more of the goods for which the mark is registered. However, as also indicated by the applicant itself, the invoices expressly describe the different ‘AEROSIL’ grades sold as outlined in the descriptions of Items 7 and 8 above.

The applicant also states that the brochures submitted in Items 2, 3 and 6 should not be taken into account since they are from dates either before or after the relevant time period. However, these brochures, as well as the brochures in Items 4 and 5, may still be taken into consideration insofar as they provide information concerning the fields of application of the different ‘AEROSIL’ grades sold within the relevant time period as shown by the invoices submitted.

The brochures describe all relevant ‘AEROSIL’ grades as fumed silica, a form of silicon dioxide with chemical formula SiO2, which serves as a universal thickening agent.

In view of this and the information provided in the brochures concerning the fields of application of the different ‘AEROSIL’ grades sold as outlined above in the description of the evidence submitted, the Opposition Division considers that the evidence of use concerns the following goods for which the earlier mark is registered:

Class 1: Chemicals for thickening liquids for oils and gel type fatty substances, chemicals for thickening liquids for acids and stripping pastes, chemicals for thickening liquids for paints and lacquers, chemicals for thickening liquids for cosmetic and pharmaceutical preparations.

However, the evidence submitted does not confirm that the earlier mark has been used in relation to chemicals for thickening water for toothpaste, and for making alcoholic and non-alcoholic beverages.

In addition, silicic acid has the chemical formula H4SiO4 and is thus not the same chemical compound as fumed silica. Therefore, the evidence filed by the opponent does not show genuine use of the trade mark for finely separated silicic acid for use as filling materials for rubber and rubber substitute materials or finely separated silicic acid for preventing the formation of lumps and for aiding pourability either.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, as mentioned above, the evidence shows genuine use of the trade mark for the following goods:

Class 1:        Chemicals for thickening liquids for oils and gel type fatty substances, chemicals for thickening liquids for acids and stripping pastes, chemicals for thickening liquids for paints and lacquers, chemicals for thickening liquids for cosmetic and pharmaceutical preparations.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition insofar it is based on earlier mark 1.

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 earlier mark 1, European Union trade mark registration No 615 757 ‘AEROSIL’.

1. The goods

The goods on which the opposition is based and for which use has been proven are the following:

Class 1: Chemicals for thickening liquids for oils and gel type fatty substances, chemicals for thickening liquids for acids and stripping pastes, chemicals for thickening liquids for paints and lacquers, chemicals for thickening liquids for cosmetic and pharmaceutical preparations.

The contested goods are the following:

Class 1: Chemicals used in industry, science, photography, agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, not of metal; Insulators.

Class 19: Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal; Building materials having insulating properties.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 1

The contested chemicals used in industry include, as a broader category, the opponent’s chemicals for thickening liquids for paints and 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 unprocessed artificial resins are sticky substances of viscous consistency that are capable of hardening permanently and the contested unprocessed plastics are chemical substances that can easily be shaped and whose composition includes mainly derivatives of cellulose, proteins and resins and are both thus related to chemicals used in industry. Furthermore, unprocessed artificial resins are a liquid synthetic polymer used as a basis for plastics, adhesives, varnishes or other products. Therefore, these contested goods as well as the contested adhesives used in industry are at least similar to the opponent’s chemicals for thickening liquids for gel type fatty substances since they may be complementary to each other and can have the same specialised end users. Furthermore, they can share the same distribution channels and be produced by the same undertakings.

Chemicals used in science, photography, agriculture, horticulture and forestry consist of chemicals used in distinct fields of application.

Fire extinguishing compositions are chemical substances that, thanks to their physical or chemical qualities, are used to put out fire and are included in the broad category of chemicals used in industry.

Tempering and soldering preparations are preparations used to harden and solder metals that consist in compounds made of ‘chemicals’ (‘tempering chemicals’ and ‘soldering chemicals’) that may be used in industry and are thus also closely related to industrial chemicals.

Chemical substances for preserving foodstuffs are used to maintain the properties and freshness of food as long as possible and include ‘chemicals used in the food industry’ for which they can be considered to be comprised in the broad category of chemicals used in industry as well.

Tanning substances can refer to chemical substances to treat animal skins to produce leather, and can be used in the leather industry.

Manures include both organic as well as chemical fertilizers and can thus consist of chemicals for use in agriculture.

Therefore, although the contested chemicals used in science, photography, agriculture, horticulture and forestry; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs and tanning substances have a different purpose to the opponent’s chemicals for thickening liquids for oils and gel type fatty substances, they all have, or can have, the same nature of chemical products and especially they can be produced by the same undertakings (since companies involved in the chemical industry often produce different types of chemicals). Therefore, all these contested goods are considered at least similar to a low degree to the opponent’s chemicals for thickening liquids for oils and gel type fatty substances.

Contested goods in Class 17

The contested rubber is a solid substance that upon vulcanization becomes elastic. Rubber is useful as an adhesive, a coating composition, a fiber, a molding compound, and an electrical insulator. The contested gutta-percha is a hard tough thermoplastic substance which is the coagulated latex of certain Malaysian trees. It consists chiefly of a hydrocarbon isomeric with rubber. The contested gum is a viscous secretion of some trees and shrubs that hardens on drying but is soluble in water, and from which adhesives and other products are made.

Therefore, the contested rubber, gutta-percha and gum share a similar nature, albeit in a different stage of their manufacturing process, with the opponent’s chemicals for thickening liquids for gel type fatty substances, being raw materials on the one hand and semi-finished products on the other. The purpose of these goods is the same (to be used in the manufacture of finished products). Since none of these goods is a finished product, they may be complementary to each other and can have the same specialised end users. Therefore, they are similar.

The contested plastics in extruded form for use in manufacture can be formed or molded under heat and pressure in its raw state and machined to high dimensional accuracy, trimmed, and finished in its hardened state. Being a general term the contested good can be used for different purposes, including for adhering. Therefore, these contested good are also similar to the opponent’s chemicals for thickening liquids for gel type fatty substances for the same reasons as those outlined above.

The contested asbestos are minerals that can be separated into thin, durable threads and extensively used in building work because of its qualities of resistance to heat, fire and chemicals. The contested mica is a lustrous rock-forming mineral that due to its resistance to electricity and heat it is used as dielectrics, in heating elements, etc. These unworked or semi-worked materials are dissimilar to the opponent’s goods since they do not have the same or a similar nature or purpose. These goods do not share the same distribution channels or sales outlets. The producers and method of use are different and they are not in competition with each other or complementary to each other.

The contested packing, stopping and insulating materials and insulators consist of finished materials or products for cushioning, stuffing, stopping and insulating. The contested flexible pipes, not of metal are long tubes used to convey for example water, oil or gas. The contested goods made from rubber, gutta-percha, gum, asbestos and mica and not included in other classes consist of finished goods made from these materials. Although the opponent’s chemicals for thickening liquids may be used in the production of some of these goods, such as flexible pipes, not of metal this link is not sufficient for a finding of similarity between them since all of these contested goods and the opponent’s goods target a different public and follow different distribution channels. Moreover, they are neither in competition nor complementary to each other. Therefore, these contested goods are also dissimilar to the opponent’s goods.

Contested goods in Class 19

The contested building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; building materials having insulating properties are dissimilar to the opponent’s chemicals for thickening liquids for oils and gel type fatty substances, chemicals for thickening liquids for acids and stripping pastes, chemicals for thickening liquids for paints and lacquers, chemicals for thickening liquids for cosmetic and pharmaceutical preparations. They have different purposes and methods of use and target different consumers via different distribution channels. They are neither complimentary nor in competition with each other.

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 varying degrees are directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, or their terms and conditions of use.

3. The signs

AEROSIL	AEROSILEX
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 signs in dispute are both word marks, for ‘AEROSIL’ and ‘AEROSILEX’ respectively.

The element ‘AERO’ in both signs will be perceived as a prefix denoting air since it is a basic English word which also exists in all languages of the European Union Member States in words such as ‘aerodynamic’ or ‘aerosol’. In relation to the goods concerned it will be perceived as a weak element alluding to the composition or structure of the goods as being airy.

The element ‘SILEX’ of the contested sign will have a meaning in certain parts of the relevant territory, such as for the English-speaking public. For this part of the public, the element ‘SILEX’ in the contested sign will be perceived as referring to ‘silica’ (the dioxide of silicon), a mineral substance (information extracted from the Oxford English Dictionary on 01/09/2017 at www.oed.com). Therefore, it will be perceived as non-distinctive in relation to the goods concerned merely describing that they consist of or contain silica, or that they are intended to be used with such goods. However, the element ‘SIL’ of the earlier mark has no meaning for the English-speaking public and will, therefore, be perceived as distinctive.

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.

In view of the above considerations, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Visually, the earlier mark, ‘AEROSIL’, is fully contained in the contested sign and they only differ in the contested sign’s additional last two letters ‘EX’.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the first letters ‛AERO’, present identically in both signs. However, whereas the second element of the earlier mark will be pronounced as ‛SIL’ by the relevant public under analysis the second element of the contested sign will be pronounced as ‛SAI-LEKS’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the earlier mark contains the element ‛SIL’, which has no meaning, and the contested sign evoke the non-distinctive concept of silica. However, as both signs will be associated with the weak concept of ‛AERO’, 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.

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 claimed that the earlier trade mark enjoys reputation but did not file any evidence in order to prove such a claim and the evidence submitted concerning use is insufficient to establish that the earlier mark also enjoys reputation. In any event, the evidence concerning proof of use cannot be taken into account for proving enhanced distinctiveness of the earlier mark since it was not submitted within the opponent’s deadline to file further evidence and arguments in support of the opposition.

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 under analysis 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.

5. Global assessment, other arguments and conclusion

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).

Account should also be 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).

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.

In the present case, the goods have been found identical, similar to varying degrees or dissimilar and the level of attention of the relevant public may vary from average to high.

The earlier mark has a normal degree of distinctiveness as a whole and the signs are visually similar to a high degree, aurally similar to an average degree and conceptually similar to a low degree.

In view of all the above and taking into account the principles of interdependence and imperfect recollection as outlined above, the Opposition Division considers that there is a likelihood of confusion on the part of the public under analysis in the relevant territory within the meaning of Article 8(1)(b) EUTMR, in particular as the relevant consumers, even those who may display a higher level of attention and even if they did recall the slight differences between the signs, would still believe, in view of their overall similarity, that the goods, even those that are similar to a low degree, offered under the different signs originated from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-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 partially well founded on the basis of the opponent’s European Union trade mark registration No 615 757 ‘AEROSIL’. It follows that the contested trade mark must be rejected for all the contested goods found to be identical or similar to varying degrees to the opponent’s goods.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the remaining goods are clearly dissimilar to opponent’s goods covered by the examined earlier mark, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is directed at these goods on the basis of the goods covered by European Union trade mark registration No 615 757 ‘AEROSIL’.

Since the opposition is not fully successful on the basis of this earlier mark, the Opposition Division will now proceed to examine the opposition in relation to the other five earlier marks invoked.

6. The goods

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

2. European Union trade mark registration No 465 559 ‘AEROPERL’

Without having assessed the proof of use concerning this earlier mark, it is based on the following goods:

Class 1: Finely devided silica for industrial use, in particular as a filler for natural and synthetic rubbers, as a thickening agent for liquid systems, as a free-flow additiv; carrier and adsorber for catalysts, for use in cosmetics, pharmaceuticals, in medical and biotechnological applications.

3. International registration designating the European Union No 1 074 887 ‘AERODISP’

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry, silica acid, aluminium oxide, aluminium silicate, titan dioxide, zircon oxide, silicon, silicates, silica for industrial use, in particular as a filler for natural and synthetic rubbers, as a thickening agent for liquid systems, as a free-flow additive; carrier and absorber for catalysts, silica for use in the chemical, textile, pharmaceutical, cosmetic, paint, ceramic and plastics industry and in medical and biotechnological applications, silica for use in the manufacture of paper, cardboard and goods made from these materials, unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2: Paints, varnishes, lacquers, pigments, paint dispersions, coatings, thickeners for paints, toner cartridges, filled, for printers and photocopiers, printing ink, toners for photocopiers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

4. International registration designating the European Union No 1 002 647 ‘AEROBATCH’

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

5. German trade mark registration No 30 711 668 ‘AEROQUAM’

Without having assessed the proof of use concerning this earlier mark, it is based on the following goods:

Class 1: Chemicals used in industry, science and photography.

6. German trade mark registration No 30 254 856 ‘AEROXIDE’

Without having formally requested the opponent to furnish proof of use concerning this earlier mark as requested by the applicant, it is based on the following goods:

Class 1: Chemicals used in industry, science, ceramics, cosmetics, medicine, electronics, photography, agriculture, horticulture and forestry, in particular metal oxides and metalloid oxides such as aluminium oxide, cerium oxides, indium tin oxide, selenium oxide, silicon oxide, titanium oxide, zinc oxide, zirconium oxide and mixtures thereof; chemical catalysts and catalyst supports; chemicals used in paper production, for heat protection, as UV filters, as flow auxiliaries, as reinforcing fillers, as raw materials for glasses, optical fibres and ceramic, for achieving antiblocking and antislip effects, as rheology and antistatic auxiliaries, as fillers for plastics and rubber, as additive for silicone rubber, unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; adhesives used in industry.

The remaining contested goods are the following:

Class 17: Goods made from rubber, gutta-percha, gum, asbestos, mica and not included in other classes; Packing, stopping and insulating materials; Flexible pipes, not of metal; Insulators.

Class 19: Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal; Building materials having insulating properties.

Contested goods in Class 17

The contested goods made from rubber, gutta-percha, gum, asbestos, mica and not included in other classes; packing, stopping and insulating materials; flexible pipes, not of metal; insulators are dissimilar to all the opponent’s goods in Class 1 of all earlier marks. Although some of these marks cover a broader specification of goods in Class 1, they are still dissimilar to the contested goods in Class 17 for the same reasons as those already outlined above in section a) of this decision. As regards the opponent’s goods in Class 2 of earlier mark 3, these goods are also dissimilar to the contested goods since they essentially concern goods that are intended to coat other items for decorative or protective purposes, toners and printing ink none of which have the same nature or purpose as the contested goods; they are neither complementary nor in competition with each other. Furthermore, they are not likely to be manufactured by the same producers, to usually be marketed through the same distribution channels or to target the same consumers.

Contested goods in Class 19

The contested building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; building materials having insulating properties are dissimilar to all the opponent’s goods of earlier marks 2-6 in Classes 1 and 2. Their nature and methods of use are different. They have a different purpose and different distribution channels. They are neither complementary nor in competition.

7. Conclusion and other arguments

The remaining contested goods in Classes 17 and 19 are dissimilar to all the goods of all the opponent’s other five earlier marks 2-6, even assuming that earlier marks 2, 5 and 6 have been used for all goods for which they are registered and for which the proof of use was not assessed or for which proof of use was not formally requested. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful on the basis of earlier marks 2-6 either.

Consequently, since it could not change the outcome of the proceedings, there is no need to undertake a full analysis of the evidence of proof of use concerning earlier marks 2 and 5 or to re-open the adversarial part of the proceedings and request the opponent to furnish proof of use of earlier mark 6.

Likewise, there is no need to assess the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘AERO’, constitute a ‘family of marks’ or ‘marks in a series’, since, regardless of whether or not the opponent can establish that it uses a family of ‘AERO’ marks, similarity between the remaining contested goods and the opponent’s goods covered by earlier marks 1-6 would still be a necessary condition for the application of Article 8(1)(b) EUTMR, which is the only Article invoked by the opponent. Since the remaining contested goods have been found dissimilar to all the goods of all the opponent’s earlier marks 1-6, this argument of the opponent cannot change the findings reached above and is therefore irrelevant.

In view of the above, the opposition cannot be successful insofar as it is directed at the remaining contested goods in Classes 17 and 19.

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

Benoit VLEMINCQ

Sam GYLLING

Frédérique SULPICE

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.