OPPOSITION No B 2 729 203

Mitsui Chemicals, Inc., also known as Mitsui Kagaku Kabushiki Kaisha, 5-2 Higashi-shimbashi 1-chome, Minato-ku, Tokyo, Japan (opponent), represented by Staeger & Sperling PartG mbB, Sonnenstr. 19, 80331 München, Germany (professional representative)

a g a i n s t

Ren Fuel K2B AB, c/o Interpares Konsult AB, Sturegatan 38, 114 36 Stockholm, Sweden (applicant), represented by Noréns Patentbyrå AB, Narvavägen 12, 115 22 Stockholm, Sweden (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 729 203 is partially upheld, namely for the following contested goods:

Class 1:        Chemical substances, chemical materials and chemical preparations; biomass; lignin; cellulose; hemi cellulose; unprocessed plastics; plastics in the form of liquids; plasticizers for plastics; additives (chemical -) for plastics; chemicals for treating fibers, plastics and rubber; chemicals for production of fibers, plastics and rubber.

Class 17:        Biofiber; natural fibers and plant fibers; fibers derived from biomass, cellulose, hemi cellulose; fibers derived from lignin; fibers for textile use; synthetic fibers; synthetically produced fibers; fibers derived from biomass; fibers derived from lignin; carbon fibers; chemical produced fibers; artificial fibers; cellulose acetate; rubber; fibers, not included in other classes.

Class 22:        Natural fibers; biofibers; artificial fibers; fibers made of synthetic material; fibers made of chemical substances; fibers made of natural material; chemical, synthetic and natural fibers for textile use.

2.        European Union trade mark application No 14 938 633 is rejected for all the above goods. It may proceed for the remaining goods, namely natural elements in Class 1.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 938 633. The opposition is based on European Union trade mark registration No 12 595 278. 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 1:        Unprocessed plastics (plastics in primary form); pulp; chemical pulp; synthetic pulp; cellulose pulp; pulp for use in the manufacture of board; pulp for use in the manufacture of paper; wood pulp for manufacturing purposes; paper pulp for manufacturing purposes; unprocessed artificial resins; polyethylene; polyolefin; unprocessed synthetic resins; plastics as raw material, especially polyolefin fibers; polyolefin fibers in the form of pulp.

Class 17:        Plastic fibers, not for use in the textiles; chemical fibers, not for use in textiles; synthetic fibers, not for use in textiles; plastic substances, semi-processed; plastics in the form of sheets, wholy or partly made from polyolefin fibers; plastics in the form of sheets.

Class 22:        Raw textile fibers; chemical fibers for textile use; fibers (textile -).

The contested goods are the following:

Class 1:        Chemical substances, chemical materials and chemical preparations, and natural elements; biomass; lignin; cellulose; hemi cellulose; unprocessed plastics; plastics in the form of liquids; plasticizers for plastics; additives (chemical -) for plastics; chemicals for treating fibers, plastics and rubber; chemicals for production of fibers, plastics and rubber.

Class 17:        Biofiber; natural fibers and plant fibers; fibers derived from biomass, cellulose, hemi cellulose; fibers derived from lignin; fibers for textile use; synthetic fibers; synthetically produced fibers; fibers derived from biomass; fibers derived from lignin; carbon fibers; chemical produced fibers; artificial fibers; cellulose acetate; rubber; fibers, not included in other classes.

Class 22:        Natural fibers; biofibers; artificial fibers; fibers made of synthetic material; fibers made of chemical substances; fibers made of natural material; chemical, synthetic and natural fibers for textile use.

Preliminary remarks

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

The term ‘especially’, 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).

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.

In its observations, the applicant argues that the actual use of the conflicting signs also demonstrates that there is no likelihood of confusion, since the signs are used in connection with different goods. In this regard, it refers to a brochure for Fybrel products. However, the Opposition Division notes that the comparison of the goods and services must be based on the wording used in the lists of goods and/or services in question. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s argument must be set aside.

Contested goods in Class 1

The contested unprocessed plastics are also contained in the list of goods of the earlier trade mark (despite the slightly different wording). Therefore, they are identical.

The contested chemical substances, chemical materials and chemical preparations include, as broader categories, the opponent’s chemical pulp. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are all considered identical to the opponent’s goods.

The contested additives (chemical -) for plastics; chemicals for treating fibers, plastics and rubber; chemicals for production of fibers, plastics and rubber include, as broader categories of chemical products, the opponent’s unprocessed synthetic resins, which are synthetic organic preparations used, inter alia, as the basis of or as compounds for making plastics, fibre composites and rubber products. Therefore, as the opponent’s goods cannot be clearly separated from the contested goods, they are identical.

The contested plastics in the form of liquids, as long as they are in a raw state, overlap with the broad category of the opponent’s plastics as raw material. Therefore, they are identical.

The contested plasticizers for plastics are substances that produce or promote plasticity and flexibility and reduce brittleness (in plastics). They can have the same nature, producers, relevant public and distribution channels as the opponent’s unprocessed synthetic resins. Furthermore, these goods can be complementary to each other. Therefore, they are similar to a high degree.

The contested biomass is organic matter used as fuel; the contested lignin is a complex organic polymer deposited in the cell walls of many plants, making them rigid and woody; the contested cellulose is a substance that exists in the cell walls of plants and is used to make paper, plastic, and various fabrics and fibres; and the contested hemi cellulose is part of a class of substances that are constituents of the cell walls of plants and are polysaccharides of a simpler structure than cellulose. As all the above contested goods refer to organic compounds or materials, they can have the same nature, producers, relevant public and distribution channels as the opponent’s pulp. Therefore, they are similar.

The contested natural elements are a subset of the chemical elements (excluding those that appear in other classes, e.g. iron, beryllium and magnesium, which appear in Class 6, and gold and silver, which appear in Class 14) including hydrogen, nitrogen, phosphorus and potassium. These goods have nothing relevant in common with any of the opponent’s goods in Classes 1, 17 and 22, that is, prepared substances which are not naturally forming and are complex chemical compositions and the results of various chemical processes and transformations. Even though some of the opponent’s goods may contain natural elements as part of their make-up, this is not sufficient in itself to show that the goods are similar, as their natures, purposes, relevant publics and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, raw materials that are subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of their nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). Finally, the goods under comparison are offered by different undertakings, have different methods of use and are not in competition with each other. Therefore, the contested natural elements are dissimilar to all the goods in Classes 1, 17 and 22 for which the earlier trade mark is registered.

Contested goods in Class 17

The contested fibers, not included in other classes; synthetic fibers; synthetically produced fibers; artificial fibers (the words ‘synthetic’ and ‘artificial’ are synonymous) include, as broader categories, the opponent’s synthetic fibers, not for use in textiles, and the contested chemical produced fibers include, as a broader category, the opponent’s chemical fibers, not for use in textiles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are all considered identical to the opponent’s goods.

The contested carbon fibers, insofar as they are not intended to be used in textiles, overlap with the broad category of the opponent’s synthetic fibers, not for use in textiles. Therefore, they are identical.

The contested biofiber; natural fibers and plant fibers; fibers derived from biomass (listed twice), cellulose, hemi cellulose; fibers derived from lignin (listed twice) include natural or semi-natural fibres, which can have the same purpose, producers, relevant public, distribution channels and method of use as the opponent’s synthetic fibers, not for use in textiles. Furthermore, they can be in competition. Therefore, they are similar to a high degree.

The contested fibers for textile use can have the same nature and producers as, and a similar method of use to, the opponent’s synthetic fibers, not for use in textiles. Therefore, they are similar.

The contested cellulose acetate is a non-flammable thermoplastic polymer made by acetylating cellulose, used in the manufacture of a variety of products, for example as the basis of artificial fibres and plastic. It can have the same nature, relevant public and distribution channels as the opponent’s cellulose pulp in Class 1. Furthermore, these goods can have the same producers, since it is very likely that a company specialising in processing cellulose will offer different kinds and forms of cellulose for further production. Therefore, they are similar.

The contested rubber refers, inter alia, to any of a range of polymeric organic materials used in manufacturing, renowned for their elasticity, flexibility and toughness. It can have the same purpose, producers, relevant public and distribution channels as the opponent’s plastic substances, semi-processed, that is, semi-finished synthetic materials made from a wide range of organic polymers (e.g. polyethylene, PVC, nylon), which can be moulded into shape while soft and then set into a rigid or slightly elastic form. Therefore, they are similar.

Contested goods in Class 22

The contested chemical fibers for textile use are also contained in the list of goods of the earlier trade mark. Therefore, they are identical.

The contested synthetic and natural fibers for textile use are included in the broad category of the opponent’s fibers (textile -). Therefore, they are identical.

The contested natural fibers; biofibers; artificial fibers; fibers made of synthetic material; fibers made of chemical substances; fibers made of natural material, insofar as they are intended for textile use, overlap with the broad category of the opponent’s fibers (textile -). 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 or similar (to different degrees) are directed at professionals with specific knowledge or expertise in industry.

The relevant public will display a high degree of attention when purchasing the goods at issue, since they are highly specialised goods that imply a high degree of sophistication and professional knowledge on the part of the consumers.

3. The signs

FYBREL	FIBROL
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 element ‘FIBROL’ of the contested sign is meaningless in those European countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public in the relevant territory, such as the Czech-, French-, German-, Italian-, Polish-, Slovak- and Spanish-speaking parts of the public.

The element ‘FYBREL’ of the earlier mark has no meaning for the public in the relevant territory on which the present comparison is focused and is, therefore, distinctive to an average degree in the context of the relevant goods.

The element ‘FIBROL’ of the contested sign is likely to be associated by the abovementioned part of the relevant public (i.e. professionals in industry) with something that is related to ‘fibre’, that is, ‘a thread or filament from which a vegetable tissue, mineral substance, or textile is formed’. In any case, it does not directly describe or allude to any characteristics of the relevant goods in a manner that could affect its distinctiveness in a material way. Therefore, it is distinctive to an average degree for the relevant goods.

Visually, the signs coincide in the sequence of letters ‘F*BR*L’, present identically in the same order in both signs. Moreover, the signs are of the same length and composition, both being single-word marks composed of six letters.

However, the signs differ in their second and fifth letters, namely ‘Y’ and ‘E’ in the earlier mark and ‘I’ and ‘O’ in the contested sign.

Given that the signs have in common four out of six letters and that these letters are in identical positions, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in those parts of the relevant territory on which the present examination is focused, the pronunciation of the signs coincides in the sound of letters ‘FI(Y)BR*L’, present identically in both signs, where the second letters of the signs are likely to be pronounced either identically or at least very similarly by the relevant public. Furthermore, as both signs consist of six phonemes of which five are placed in the same order, they have the same rhythm and intonation.

In contrast, the pronunciation differs in the sound of the fifth letter of each sign, namely the letter ‘E’ of the earlier mark and the letter ‘O’ of the contested sign, both being vowels.

Given that the signs have in common five out of six sounds and that these sounds are in identical positions, the signs are aurally similar to a high degree.

Conceptually, as explained above, the relevant public is likely to perceive a concept only in the contested sign, while the earlier mark has no meaning from the perspective of that part of the public. 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.

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 relevant goods from the perspective of the Czech-, French-, German-, Italian-, Polish-, Slovak- and Spanish-speaking parts 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).

Account must be also 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 with 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).

The present assessment of likelihood of confusion considers the perception of the Czech-, French-, German-, Italian-, Polish-, Slovak- and Spanish-speaking parts of the public in the relevant territory.

As concluded above, the contested goods are partly identical, partly similar (to different degrees) and partly dissimilar to the opponent’s goods. Those found to be identical or similar (to different degrees) are directed at professionals with a high degree of attention. The earlier trade mark has a normal degree of inherent distinctiveness.

The signs in conflict are visually similar to an average degree, aurally similar to a high degree and conceptually not similar, as explained in detail above in section c) of this decision. The differences between the signs are limited to only two different letters (from a visual point of view) and one different sound (from an aural point of view). However, the Opposition Division is of the opinion that these differences are not sufficient to counteract the similarities between the signs, which result in very similar impressions given by the signs when being perceived by the public as a whole. Even professionals with a high degree of attention may be confused as to the origin of the goods in question.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion on the part of the Czech-, French-, German-, Italian-, Polish-, Slovak- and Spanish-speaking parts of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 595 278. 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.

It follows from the above that the contested sign must be rejected for the goods found to be identical or similar (to different degrees) to those of the earlier trade mark.

The contested natural elements in Class 1 are dissimilar to all of the opponent’s goods. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Carlos MATEO PÉREZ

Martin MITURA

Ric WASLEY

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.