OPPOSITION No B 2 600 214
Brenntag Holding GmbH, Stinnes-Platz 1, 45472 Mülheim an der Ruhr, Germany (opponent), represented by Viering, Jentschura & Partner mbB, Grillparzerstraße 14, 81675 München, Germany (professional representative)
a g a i n s t
Siro s.r.l., Via Meucci 5 – Z.I. Selve, 35037 Teolo (Padova), Italy (applicant), represented by Cantaluppi & Partners S.R.L., Piazzetta Cappellato Pedrocchi, 18, 35122 Padova, Italy (professional representative).
On 20/06/2017, the Opposition Division takes the following
1. Opposition No B 2 600 214 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 369 482. The opposition is based on German trade mark registration No 302 009 016 170 and international trade mark registration No 1 034 678 designating Spain, Czech Republic, Ireland, Cyprus, Austria, Lithuania, Latvia, United Kingdom, Italy, Estonia, Benelux, Sweden, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Denmark, Poland, Hungary, Croatia, Greece, Finland and France. 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.
i) On substantiation of German trade mark registration No 302 009 016 170
The applicant argues that earlier German trade mark registration No 302 009 016 170 was not substantiated correctly as, according to the applicant, the opponent failed to submit a translation of the evidence as required pursuant to Rule 19(3) EUTMIR.
In that regard it has to be clarified that the evidence for substantiation, consisting of a printout from German trade mark database, along with the required translation of this document into the language of proceedings, was submitted together with the notice of opposition on 27/10/2015. The Office forwarded the submissions of the opponent to the applicant on 28/10/2015. Furthermore, the translation of the original document complied with the requirements set out in Rule 98(1) EUTMIR. Therefore, the applicant’s arguments are dismissed as unfounded.
ii) On proof of use
Proof of use of the two earlier marks was requested by the applicant. As regards earlier German trade mark No 302 009 016 170, the proof of use request is admissible, because on the day of publication of the contested application, five years had elapsed from the registration date of this earlier mark.
However, as regards the opponent’s earlier international registration No 1 034 678, the proof of use request is inadmissible in relation to all of the twenty-four designated territories, because none of them was subject to the proof of use requirement at the date of publication of the contested application. The Office informed the parties accordingly on 08/06/2016.
The opponent submitted evidence aimed at demonstrating genuine use of its earlier German trade mark. However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier German mark had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.
- The goods
The opposition is based on all of the goods and services which earlier German trade mark No 302 009 016 170 and international trade mark No 1 034 678 are registered for, namely those included in Classes 1, 2, 3, 4, 37, 39, 40 and 42. The most relevant goods on which the opposition is based in relation to both earlier marks are the following:
Class 2: Binding agents and thinners for paints.
The contested goods, after limitation, are the following:
Class 2: Coating products for the car bodywork sector.
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 contested goods essentially are coatings. As put forward by the opponent, a coating is a covering that is applied to the surface of an object (referred to as substrate). The Opposition Division accepts the opponent’s argument that the coating of car body parts is partly functional (concerns corrosion resistance, wear resistance etc.) and partly decorative. The opponent’s thinners for paints are volatile liquids used to dilute paint, varnish, etc., to the desired consistency. They are necessary for the use of the contested goods, for example the opponent’s turpentine (thinner for paints) is indispensable for the use of coating products, such as paints, lacquers and varnishes, irrespective of the fact that the field of application of the contested goods is specified to car bodyworks. The goods are complementary and are commonly manufactured by the same undertakings. They are directed at the same public and move over the same distribution channels. Therefore, the contested coating products for the car bodywork sector are similar to the opponent’s thinners for paints covered by the two earlier marks.
- 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 relevant goods of the earlier marks target the general and professional public, since thinners for paints can be used for do-it-yourself household repairs, as well as by specialists with specific professional knowledge or expertise. On the other hand, the contested application seeks protection for specialised goods which are exclusively directed at business customers in the automotive industry (manufacture, repair, maintenance).
Therefore, the relevant public for assessing likelihood of confusion will be the professional public only as it is the part of the public which will be exposed to both trade marks at issue.
The degree of attention in relation to the relevant goods is considered to be relatively high, considering that coatings and thinners for paints have a significant impact on the quality of the finished goods which in the present case concerns the appearance, wear resistance, corrosion resistance and other aspects of car bodywork coatings.
- The signs
Earlier trade marks
As regards earlier German trade mark No 302 009 016 170 (earlier mark 1), the relevant territory is Germany. As regards earlier international registration No 1 034 678, the relevant territories are Spain, Czech Republic, Ireland, Cyprus, Austria, Lithuania, Latvia, United Kingdom, Italy, Estonia, Benelux, Sweden, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Denmark, Poland, Hungary, Croatia, Greece, Finland and France (earlier mark 2).
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 two earlier marks are identically comprised of the word ‘BRENNTAG’. For example, in German-speaking territories (such as Germany – concerning earlier mark 1; Austria, parts of Benelux – concerning earlier mark 2) it may be associated with some semantic content which consists of the juxtaposition of the words ‘Brenn’ and ‘Tag’, making up the unusual yet grammatically correct expression ‘burn(ing) day’. The opponent’s argument that the public would discern the letters ‘AG’ as denoting the legal form of business (‘Aktiengesellschaft’) in the earlier marks is set aside as highly unlikely. However, insofar as earlier mark 2 is concerned, there is a significant part of the relevant public which will perceive this word as lacking any evident meaning.
As regards the contested sign, for a part of the relevant public it lacks any meaning. For another part of the relevant public insofar as earlier mark 2 is concerned, for example in the United Kingdom and Ireland, the word ‘BRENT’ refers to a small goose. The Opposition Division notes the applicant’s argument that the term ‘BRENT’ is used internationally as trading classification of crude oil. Nevertheless, it can be reasonably assumed that this meaning will not be perceived by the relevant public, especially since the goods at issue do not trigger such associations.
The Opposition Division will first examine the opposition in relation to the part of the public of earlier mark 2, such as consumers in Spain, Italy, France, Greece and Latvia, for which the words ‘BRENNTAG’ and ‘BRENT’ have no meaning and are distinctive to an average degree, as this is the best light in which the opponent’s case can be considered.
Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Being word marks, the signs under comparison have no elements that would be more dominant (eye-catching) than others.
Visually and aurally, the signs coincide in the letters/sounds ‘BREN’ and ‘T’. However, they differ in the letters/sounds ‘N’ and ‘AG’ of earlier mark 2, irrespective of the different pronunciation rules in different parts of the relevant language areas. Although the difference in the double ‘N’ in the earlier mark as opposed to the single ‘N’ in the contested sign may not be particularly noticeable on the aural level, the fact that the word ‘BRENNTAG’ features the ‘NN’ graphemes is quite striking from a visual perspective.
The opponent claims that the public will mentally register the beginning of a trade mark, which is where the coincidence with the other mark lies, and will only pay scant attention to their endings. In that regard the Opposition Division notes that, while, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the present case, it is true that the signs coincide in four letters present in their initial parts. Nevertheless, their endings and structures do differ. More importantly, the earlier mark is perceptibly longer than the contested sign (eight letters vs five letters).
It cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. In accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 84).
Therefore, despite the coincidence in the string of letters/sounds in the initial parts of the signs, the degree of visual and aural similarity between the signs is below average.
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 marks
The distinctiveness of the earlier marks 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 marks enjoy enhanced distinctiveness, but did not file any evidence in order to prove such a claim.
It has to be clarified that the evidence of use submitted on 13/10/2016 cannot be taken into account for the substantiation of the claim for enhanced distinctiveness for any of the earlier rights on which the opposition is based, since the time limit set for the opponent to submit further facts, evidence and arguments for completing its opposition expired on 08/03/2016, as set out in the Office’s letter of 03/11/2015.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se.
As regards the earlier right which the present assessment focuses on, namely international registration No 1 034 678 designating Spain, Italy, France, Greece and Latvia, bearing in mind what is set out in section c) of this decision, the distinctiveness of this earlier right must be seen as normal.
As regards the remaining rights invoked by the opponent, the earlier mark as a whole has no clear meaning for the goods in question from the perspective of the public in the relevant territories. Therefore, the remaining earlier rights enjoy an average degree of inherent distinctiveness.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
As set out in section c) of this decision, the examination of the opposition is carried out in relation to that part of the relevant public of earlier international registration No 1 034 678 for which the signs are conceptually neutral, thus focusing on the best-case scenario for the opponent.
The contested goods are similar to some of the goods and services on which the opposition is based. That, however, must be weighed against the other factors which are relevant for the global assessment, one of which is the relatively high degree of attention that the relevant public displays when purchasing the goods at issue, and the other being the similarity between the signs which is below average on visual and aural levels. The opponent failed to demonstrate that the earlier mark enjoys enhanced distinctiveness. It is distinctive to an average degree, which affords it a normal scope of protection in the present assessment.
In a global appreciation of the relevant factors, the Opposition Division considers that the differences identified between the signs are sufficient to counteract the similarities and to enable the relevant public, being professionals with technical knowledge about the qualities of the goods at issue and sophistication of the pertinent market sector, to safely distinguish between the trade marks.
The opponent refers to the principle of interdependence which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that the relevant goods are similar cannot, in this case, compensate for the differences identified between the signs.
Considering all the above, there is no likelihood of confusion on the part of the public for which the signs lack any meaning. Therefore, the opposition must be rejected, insofar as it is based on earlier international registration No 1 034 678 designating Spain, Italy, France, Greece and Latvia.
This absence of a likelihood of confusion equally applies to the relevant public of earlier German trade mark No 302 009 016 170 and the remaining part of public of earlier international registration No 1 034 678 designating Czech Republic, Ireland, Cyprus, Austria, Lithuania, United Kingdom, Estonia, Benelux, Sweden, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Denmark, Poland, Hungary, Croatia and Finland, which either perceives the signs in the same manner as the public already examined, or for which the signs are not similar from a conceptual point of view. This is because, as a result of the semantic content possibly attached to one or both of the signs, that part of the public will perceive the signs as being even less similar.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent in relation to earlier German trade mark registration No 302 009 016 170.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.