OPPOSITION No B 2 695 453

Brunox AG, Tunnelstrasse 6, 8732 Neuhaus / SG, Switzerland (opponent), represented by Alexandra Lieberherr, Brunox Korrosionsschutz GmbH, Adlzreiterstrasse 13, 85051 Ingolstadt, Germany (employee representative)

a g a i n s t

Brim N.V., Jaarbeurslaan 23/4, 3600 Genk, Belgium (applicant), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 695 453 is upheld for all the contested goods, namely:

Class 1:        Chemicals used in industry; Chemical additives; Chemical additives for enhancing the performance of fuels; Olefins, Hydrocarbons, solvents for industrial use, Polymers for use in manufacturing, Brake fluid, Fluids for hydraulic circuits, Antifreeze, Coolants, Antifreeze, Unprocessed synthetic resins and plastics, Adhesives.

Class 4:        Lubricating oil and lubricating grease, cutting fluids, paraffin, synthetic lubricants, motor oil, lubricant base stocks, motor fuel, fuels, aviation fuel, maritime fuels, oil-gas, fuel oil, petrol.

2.        European Union trade mark application No 14 819 171 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 819 171, , namely against all the goods in Classes 1 and 4. The opposition is based on international trade mark registration No 1 163 160, ‘BRUNOX’, designating the European Union. The opponent invoked Article 8(1)(a) and (b) and 8(5) 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 1:        Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manure for agriculture; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances, adhesives for industrial use.

Class 2:        Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; dyestuffs; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 4:        Industrial oils and greases; lubricants; products for dust absorbing, wetting and binding; fuels (including engine fuels) and illuminants; candles and wicks for lighting.

The contested goods are the following:

Class 1:        Chemicals used in industry; Chemical additives; Chemical additives for enhancing the performance of fuels; Olefins, Hydrocarbons, solvents for industrial use, Polymers for use in manufacturing, Brake fluid, Fluids for hydraulic circuits, Antifreeze, Coolants, Antifreeze, Unprocessed synthetic resins and plastics, Adhesives.

Class 4:        Lubricating oil and lubricating grease, cutting fluids, paraffin, synthetic lubricants, motor oil, lubricant base stocks, motor fuel, fuels, aviation fuel, maritime fuels, oil-gas, fuel oil, petrol.

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

The term ‘including’, 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 (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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; unprocessed plastics are identically contained in the opponent’s list of goods.

The contested chemical additives; chemical additives for enhancing the performance of fuels overlap with the opponent’s chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry. Therefore, they are identical.

Hydrocarbons are organic compounds that are made of hydrogen and carbon atoms. They are found in, inter alia, crude oil and natural gas and are the main source of petroleum. One main type of petrochemical raw materials is olefins. One of the most common olefins is ethylene (used in the production of ethanol, ethylene oxide and antifreeze).

A coolant is a fluid that flows through or around a device to prevent the device from overheating, transferring the heat produced by the device to other devices that either use or dissipate it. Fuels are frequently used as coolants for engines. A cold fuel flows over some parts of the engine, absorbing its waste heat and being preheated before combustion.

Brake fluid is a type of hydraulic fluid used in hydraulic motors, and composed of solvents, lubrication and additives.

The contested olefins, hydrocarbons, solvents for industrial use; brake fluid, fluids for hydraulic circuits, antifreeze (listed twice), coolants are included in, or overlap with, the broad category of the opponent’s chemicals used in industry. They are considered identical.

The contested unprocessed synthetic resins are included in the broad category of the opponent’s unprocessed artificial resins. Therefore, they are identical.

A polymer is a large molecule, composed of many repeated subunits. Plastics are a type of polymer. Therefore, the contested polymers for use in manufacturing include, as a broader category, or overlap with the opponent’s unprocessed plastics. 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 adhesives include, as a broader category, the opponent’s adhesives for industrial use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 4

The contested lubricating oil and lubricating grease, synthetic lubricants, lubricant base stocks are included in the broad category of the opponent’s lubricants. Therefore, they are identical.

The contested cutting fluids, motor oil, fuel oil are included in the broad category of the opponent’s industrial oils and greases. Therefore, they are identical.

The contested motor fuel, fuels, aviation fuel, maritime fuels, oil-gas, petrol are included in, or overlap with, the broad category of the opponent’s fuels (including engine fuels). Therefore, they are identical.

Candles are often made from, inter alia, paraffin wax, a product of petroleum refining. The contested paraffin is therefore considered similar to a low degree to the opponent’s candles. The goods have the same nature or similar natures and the same purpose; they are complementary in the sense that one is important or even indispensable for the use/manufacture of the other. The goods may be distributed through the same channels and the consumer may assume that they have the same commercial origin or at least that they are manufactured by economically linked undertakings.

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, some of the goods found to be identical or similar are directed at the public at large and some are highly specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention is therefore deemed to range from average to high.

3. The signs

BRUNOX
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 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.

The element ‘BRUNO’ is meaningful in certain territories, for example in those countries where it is understood as a male forename, for example for the English-speaking public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in the United Kingdom.

The earlier mark is a word mark, ‘BRUNOX’. It has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark, consisting of the verbal element ‘BRUNO’ written in red italic upper case letters, with the stem of the letter ‘R’ omitted. The element ‘BRUNO’ will be understood as a male name by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The figurative elements in the contested mark are less distinctive, as they are purely decorative. Therefore, the verbal element is more distinctive than the figurative elements.

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).

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.

Visually, the signs coincide in the verbal element ‘BRUNO’, which is distinctive. However, they differ in the last letter, ‘X’, of the earlier mark and in the stylisation and colour of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BRUNO’, present identically in both signs. This verbal element is distinctive, as explained above. The pronunciation differs in the sound of the last letter, ‛X’, of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

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 and 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).

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.

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).

In the present case, the contested goods are partly identical and partly similar to a low degree to the earlier goods. They target the public at large and business customers with specific professional knowledge or expertise. The degree of attention ranges from average to high.

The earlier mark is a word mark and the contested mark, even though it is a figurative mark, consists solely of a stylised verbal element, which is also the distinctive and dominant element in the sign. This word is entirely included in the beginning of the earlier mark. The marks differ only in the last letter, ‘X’, of the earlier sign and in the slight stylisation and colour of the contested mark.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, even to a low degree, to those of the earlier trade mark. The high degree of similarity between the signs outweighs the low degree of similarity between the goods.

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 well founded on the basis of the opponent’s international trade mark registration No 1 163 160 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(5) EUTMR.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

André Gerd Günther BOSSE

Lena FRANKENBERG GLANTZ

Plamen IVANOV

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.