OPPOSITION No B 2 761 032

Clear Pet, S.L., C/ Ronda de Algemesí nº 49, 46600 Valencia, Spain (opponent), represented by Kapler, Calle Orense, 10, 1º Of. 12, 28020 Madrid, Spain (professional representative)

a g a i n s t

Klöckner Pentaplast Europe GmbH & Co.KG, Industriestrasse 3-5, 56412 Heiligenroth, Germany (applicant), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 761 032 is upheld for all the contested goods.

2.        European Union trade mark application No 15 401 516 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 401 516 ‘ClikPET’. The opposition is based on European Union trade mark registration No 10 776 888. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 17:         Plastics in extruded form for use in manufacture: Flakes of PET (polyethylene terephthalate) and PET (polyethylene terephthalate) chips. Rubber, Gutta-percha, Gum, Asbestos, Mica and goods made from these materials, not included in other classes; Flexible pipes, not of metal.

Class 39:         Collection, transport, packaging and storage of all kinds of plastics and waste.

Class 40:         Waste management; Treatment, recovery and recycling of materials, in particular plastics; Waste and refuse destruction and incineration.

The contested goods are the following:

Class 16:         Plastic materials for packaging.

Class 17:         Plastics in extruded form for use in manufacture; Plastic film; Plastic discs.

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 16

The contested Plastic materials for packaging are similar to a low degree to the opponent’s goods made from these materials [Rubber], not included in other classes, in class 17,  since the latter might contain, among other goods, also those packaging materials made of rubber. The goods may coincide in purpose, manufacturer, distribution channels and users.

Contested goods in Class 17

The contested Plastics in extruded form for use in manufacture include, as a broader category,  the opponent’s Plastics in extruded form for use in manufacture: Flakes of PET (polyethylene terephthalate) and PET (polyethylene terephthalate) chips. 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 Plastic film; Plastic discs are similar to a low degree to the opponent’s goods made from these materials [Rubber], not included in other classes,  since the latter might contain, among other goods, also packaging/ surface covering materials made of rubber or discs made of rubber. The goods may coincide in purpose, manufacturer, distribution channels and users.

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 a low degree are directed at the public at large and at customers with specific professional knowledge or expertise.

The degree of attention varies from average to high depending on the nature, price and sophistication of the goods.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

	ClikPET
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements of the marks are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The elements ‘ClearPET’ and the device element of the earlier figurative mark, depicted in green, have no meaning for the relevant public and are, therefore, distinctive. The mark has no elements that could be considered clearly more dominant than other elements.

The element ‘ClikPET’ of the contested word sign has no meaning for the relevant public and is, therefore, distinctive.

When signs consist of both verbal and figurative components, as the earlier mark in the present case, then 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).

Furthermore, it is noted that as the contested mark is a word mark, it is the word that is protected and not its written form.

Visually, the signs coincide in their first letters CL and last letters PET. The marks differ in the letters EAR/IK, placed in the middle of the signs, and in addition, in the device element and colours of the earlier mark, which are not present in the contested mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters /cl/ included at the beginning of the first syllables CLEAR/CLIK of both signs respectively and in the sound of the last letters /PET/ present identically in both signs. The pronunciation differs in the sound of the letters EAR/IK placed in the middle of both signs, which have no respective counterparts.  

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the relevant public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar to a low degree. The level of attention ranges from average to high. The similarities and dissimilarities between the marks have been established.

The marks have been found visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

Therefore, when the differences in the letters referred to above are overlooked, since they are placed in the middle of the word elements, it is likely that the two signs, in view of the coinciding elements, are perceived as coming from the same undertaking or economically-linked undertakings. The non-conclusive figurative elements in the earlier mark are considered not to distract the consumer.

The marks can be easily mistaken by public when seen or pronounced as the similarities are not counterbalanced by any specific meaning that would help the consumers to distinguish between the marks. It is also noted, that contrary to the applicant’s argument concerning the low degree of distinctiveness of the earlier mark, it is not feasible to assert that the average Spanish-speaking public would grasp the meaning of a highly technical and chemical term PET, nor any other words in the mark to that respect. Therefore the level of distinctiveness of the marks for that public is not altered. Therefore, the applicant’s argument is dismissed.

Furthermore, it constitutes a frequent practice nowadays for companies to make small variations of their trade marks (e.g. by altering their typeface or colour, or adding terms or elements to them) in order to name new lines of products, or to create a modernised version of it.  In the present case, the public might consider the PET product line being amended with a new product line with a similar looking/sounding beginning.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Based on the principle of imperfect recollection, it is considered that the similarities between the signs established above are sufficient to cause at least for a part of the public to believe that the conflicting goods, which are identical and similar to a low degree come from the same undertaking or economically linked undertakings even for those consumers with a high degree of attention. Consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking, general 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, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 776 888. It follows that the contested trade mark must be rejected for all the contested goods.

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.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Erkki MÜNTER

Irina SOTIROVA

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.