OPPOSITION No B 2 687 344

Total SA, 2 place Jean Millier, La Défense 6, 92400 Courbevoie, France (opponent), represented by Stéphanie Polselli, 2 place Jean Millier, 92078 Paris La Défense Cedex, France (professional representative)

a g a i n s t

Compañía Española de Petróleos, S.A.U., Torre Cepsa, Pº de la Castellana, 259A, 28046 Madrid, Spain (applicant), represented by Salvador Ferrandis IP Legal, SLP, C/ Joaquin Costa nº 24, 28002 Madrid, Spain (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 687 344 is upheld for all the contested goods.

2.        European Union trade mark application No 14 875 868 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 14 875 868. The opposition is based on European Union trade mark registration No 4 882 486. 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

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

Class 19: Asphalt, bitumen, tar and derivatives thereof, among other for road surfaces.

The contested goods are the following:

Class 19: Bitumen-based goods.

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

Contrary to the applicant’s assertion, the term ‘among other’, 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Bitumen is any of the various flammable mixtures of hydrocarbons and other substances, occurring naturally or obtained by distillation from coal or petroleum, that is a component of asphalt and is used, inter alia, for surfacing roads and for waterproofing. The contested bitumen-based goods may be considered as a synonym of the opponent’s bitumen derivatives as both consist of mixtures of bitumen with other components. Therefore, they are identical.

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 are directed at the public at large and at professionals from the construction and civil engineering sectors with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the technical specifications and their price. For example, the degree of attention will be average in relation to some inexpensive bituminous coatings for household use and high for other highly technical paving bitumen mixtures.

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

3. The signs

EMULSIS	EMULBIT
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 aural comparison is closer in certain territories, for example, in those countries where French is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public such as France, Belgium and Luxembourg.

The earlier mark has no clear meaning for the relevant public and is, therefore, distinctive.

The applicant claims that ‘EMUL-/EMULS-‘ is a descriptive prefix for the relevant goods because it clearly evokes the word ‘emulsion’, which describes a characteristic of the concerned goods, in particular, a liquid form that the concerned goods may adopt and that it is very similar to the equivalent word in French ‘émulsion’.

However, the Opposition Division is of the opinion that this interpretation and, in particular the exact meaning of ‘a fine dispersion of minute droplets of one liquid in another in which it is not soluble or miscible’ may be, at most, grasped by the professional public, which is not the target public analysed in the present decision as seen in section b).

The element ‘-BIT’ of the contested sign may be understood by the relevant public as a reference to the French equivalent of the word ‘bitumen’, namely ‘bitume’. Bearing in mind that the relevant goods are bitumen-related, this element is weak for these goods.

The applicant states in this regard that the element ‘-BIT’ will be understood as the English word ‘bit’ meaning ‘a small piece of something’. However, taking into account that the relevant public considered is the French-speaking public and that in view of the bitumen-related goods the public will be more prone to associate it with the French word ‘bitume’, the applicant’s claim should be set aside.

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 sequence of letters ‘EMUL*I*’. Consequently, the signs coincide in their first four letters and in their penultimate one, having, moreover, an identical length of seven letters. The signs differ in their antepenultimate and last letters, namely ‘S*S’ in the earlier mark and ‘B*T’ in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛EMUL*I(*)’, present identically in both signs. They have the same number of syllables, coinciding in their first two (/e-mul-si(s)/ vs /e-mul-bi(t)/), and the same vowel structure (‘e-u-i’) and, therefore, their rhythm and intonation is highly similar. The pronunciation differs only in the sound of their antepenultimate letters, namely ‘S’ in the earlier mark and ‘B’ in the contested sign, taking into account that their respective last letters will not be pronounced by the relevant French-speaking public.

Therefore, the signs are aurally highly similar.

Conceptually, although at least part of the public in the relevant territory will perceive the meaning of the weak element ‘BIT’ in 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. For the rest of the public in the relevant territory for whom neither of the signs has a meaning, 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 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

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, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods are identical to the opponent’s goods. The examination has been carried out on the basis of the public at large with an average degree of attention.

It has also been concluded that the signs are visually and aurally highly similar, whereas the signs are not conceptually similar because of the existence of a weak element in the contested sign for part of the public or the conceptual aspect does not influence the assessment of the similarity of the signs for the remaining part of the public.

Additionally, 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).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the overall degree of similarity between them. Therefore, the relevant public may believe that the identical goods come from the same undertaking or, at least, economically-linked undertakings.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings because they are based on the fact that the similarity of the signs is found in a non-distinctive common element unlike in the present case, as explained above.

Considering all the above, there is a likelihood of confusion on the part of the general public that speaks French.- pat Given that 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 4 882 486. 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

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Vanessa PAGE

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.