OPPOSITION No B 2 782 954
CHT R. Beitlich GmbH, Bismarckstr. 102, 72072 Tübingen, Germany (opponent),
represented by Penningtons Manches LLP, 125 Wood Street, London EC2V 7AW,
United Kingdom (professional representative)
a g a i n s t
Cnnc Huayuan Titanium Dioxide Co., Ltd., Second floor, No. 359, Hecheng West
road, Jiayuguan, Gansu Province, People's Republic of China (applicant),
represented by José Izquierdo Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao
(Vizcaya), Spain (professional representative).
On 13/10/2017, the Opposition Division takes the following
1. Opposition No B 2 782 954 is upheld for all the contested goods.
2. European Union trade mark application No 15 592 454 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 592 454 . The opposition is based on United Kingdom
trade mark registration No 2 005 241 in relation to which the opponent
invoked Article 8(1) (b) and Article 8(5) EUTMR, and on United Kingdom non-
registered trade mark 'CHT' in relation to which the opponent invoked Article 8(4)
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 782 954 page: 2 of 6
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.
a) The goods
The goods on which the opposition is based are, inter alia, the following:
Class 2: Paints, varnishes, lacquers; preservatives against rust and against
deterioration of wood; colorants.
The contested goods are the following:
Class 2: Zinc oxide [pigment]; pigments; titanium dioxide [pigment]; coatings for
tarred felt [paints]; ceramic paints; coatings [paints]; wood coatings [paints]; lacquers;
Contested goods in Class 2
Lacquers; paints; varnishes are identically contained in both lists of goods.
The contested zinc oxide [pigment]; pigments; titanium dioxide [pigment] are included
in the broad category of the opponent’s colorants. Therefore, they are identical.
The contested coatings for tarred felt [paints]; ceramic paints; coatings [paints]; wood
coatings [paints] are included in the broad category of the opponent’s paints.
Therefore, they are identical.
b) 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, part of the goods found to be identical are directed at the public
at large and at business customers with specific professional knowledge or expertise.
However, some of the goods such as zinc oxide [pigment]; titanium dioxide [pigment]
are more likely to be directed only at the latter customers. The degree of attention
may vary from average to high, depending on the specialised nature of the goods.
The degree of attention of the public at large is deemed average whereas the degree
of attention of the professionals may vary from average to high, depending on the
specialised nature of the goods, the frequency of purchase and their price.
Decision on Opposition No B 2 782 954 page: 3 of 6
c) The signs
Earlier trade mark Contested sign
The relevant territory is the United Kingdom.
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).
'CHT' in both signs has no meaning for the relevant public or at least not in relation to
the relevant goods and is distinctive. In the contested sign, it is combined with a final
letter 'i' but this letter does not add any concept for either part of the public in relation
to the goods covered by the sign and the sign as a whole is distinctive.
The earlier mark contains a figurative element which is placed together with the word
element in a rectangular frame. While the opponent considers that this element
represents a flask, the Opposition Division considers that such is not obvious to the
relevant public as a whole. In any event, in this respect, it should be noted that 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).
Visually, the signs coincide in the letters ‘CHT’, represented in standard bold capital
letters in both signs. However, they differ in the final letter 'i' of the contested sign as
well as in the figurative elements of the earlier mark, which, however, have little
impact on the consumer as explained above. Therefore, the signs are highly similar.
Aurally, the signs at issue will be pronounced by spelling out each of the letters
individually. The pronunciation of the signs coincides in the sound of the letters ‛CHT’,
present identically in both signs. The pronunciation differs in the sound of the letters
‛i’ of the contested sign, which has no counterpart in the earlier mark.
Therefore, the signs are highly similar.
Conceptually, reference is made to the previous considerations and in view of
these, a conceptual comparison is either not possible as neither sign has a meaning
as a whole, or must lead to concluding that the signs are not conceptually similar as
the contested sign will not be associated with any meaning whereas a flask may be
perceived in the earlier mark.
Decision on Opposition No B 2 782 954 page: 4 of 6
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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
e) 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 (recital 8
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
In addition, the global assessment of the risk of confusion entails certain
interdependence between the factors taken into account and, in particular, between
the similarity of the trademarks and the similarity of the goods or services covered.
Accordingly, a low degree of similarity between those goods or services may be
offset by a high degree of similarity between the marks, and vice versa (23/10/2002,
T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods at issue are identical and the signs are visually, aurally
highly similar in that the single word element 'CHT' of the earlier mark is entirely
included in the single word element 'CHTi' of the contested sign. Conceptually, the
signs are either not comparable or not similar. The degree of distinctiveness of the
earlier sign is one of the factors to be taken into account in the overall assessment
(11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). In the present case, the
distinctiveness of the earlier mark has been seen as normal.
The goods at issue are directed at the public at large and/or at business customers
and the degree of attention varies from average to high. In this respect, account must
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).
Decision on Opposition No B 2 782 954 page: 5 of 6
Moreover, 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, it is highly
conceivable that the relevant consumer will perceive the contested mark as a sub-
brand, a variation of the earlier mark, configured in a different way according to the
type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Indeed, the differences caused by the figurative elements are not such as to have
much of an impact on the consumer and the additional letter 'i' in the contested sign,
in lower case where the preceding letters are all represented in upper case, can be
interpreted by the public as distinguishing a different line of goods of the same or
economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s United
Kingdom trade mark registration No 2 005 241. It follows that the contested trade
mark must be rejected for all the contested goods.
As the earlier United Kingdom trade mark registration No 2 005 241 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods against which the opposition was directed, there is no need to examine the
other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
Likewise, 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(4) and Article 8(5) EUTMR.
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 782 954 page: 6 of 6
The Opposition Division
Benoit VLEMINCQ Martina GALLE Begoña URIARTE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.