OPPOSITION No B 2 689 241
Institut Univ. de Ciència i Tecnologia, S.A., Alvarez de Castro, 63, 08100, Mollet, Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)
a g a i n s t
Greenchemicals S.p.A., Via de Chirico 4, 20900 Monza, Italy (applicant), represented by Stefano Pajola, Eureka IP Consulting, Via Monte Cengio 32, 36100 Vicenza, Italy (professional representative).
On 10/03/2017, the Opposition Division takes the following
1. Opposition No B 2 689 241 is upheld for all the contested goods.
2. European Union trade mark application No 14 942 189 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 14 942 189. The opposition is based on Spanish trade mark registration No 2 935 457. 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.
- 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; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
The contested goods are the following:
Class 1: Chemicals used in industry; chemical preparations for scientific purposes and other than for medical or veterinary use; unprocessed plastics and artificial resins; coolants; curing preparations; adhesives for use in industry; gases for industrial purposes; chemical additives; flame retarding compositions; antioxidants for use in manufacture.
Class 2: Corrosion preventatives; preparations for preventing the deterioration of wood; diluters; dyes and dyestuffs; fixatives and siccatives (drying agents) for varnishes and paints; inks; varnish; paints, enamels and varnishes; raw natural resins.
Class 4: Carburants; fuel; industrial grease; lubricants.
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 1
The contested chemicals used in industry; unprocessed plastics and artificial resins; adhesives for use in industry are identically contained in both lists of goods.
The contested chemical preparations for scientific purposes and other than for medical or veterinary use; coolants; curing preparations; gases for industrial purposes; chemical additives; antioxidants for use in manufacture are included in the broad category of the opponent’s chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry. Therefore, they are identical
The contested flame retarding compositions are included in the broad category of the opponent’s fire extinguishing compositions. Therefore, they are identical.
Contested goods in Class 2
The contested corrosion preventatives; preparations for preventing the deterioration of wood include as broad categories or overlap with, the opponent’s preservatives against rust and against deterioration of wood. Therefore, they are identical.
The contested varnish; paints, enamels and varnishes; raw natural resins are identically contained in both lists of goods (including synonyms).
The contested diluters; dyes and dyestuffs; fixatives and siccatives (drying agents) for varnishes and paints; inks are similar to the opponent’s paints, varnishes, lacquers as they can coincide in producer, end user and distribution channels. Furthermore, some of them are also complementary.
Contested goods in Class 4
The contested lubricants are identically contained in both lists of goods.
The contested industrial grease is included in the broad category of the opponent’s Industrial oils and greases Therefore, they are identical.
The contested carburants; fuel are included in the broad category of, or overlap with, the opponent’s fuels (including motor spirit) and illuminants. Therefore, they are identical.
- 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 are directed at the public at large and at business customers 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 frequency of purchase and their price.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- The signs
Earlier trade mark
The relevant territory is Spain.
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).
Visually, the marks coincide in their first ten out of a total of 14 letters, namely, ‘GREENCHEMI’. They merely differ in their last four letters, namely, ‘*STRY’ in the earlier mark and ‘*CALS’ in the contested sign and the figurative elements of the contested sign that have no counterpart in the earlier mark (that is its rather standard typeface, the blue and green colours, the smiley and the hexagons which in chemistry are known as skeletal formula used to show the skeletal structure of a molecule). However, the figurative elements are of a limited distinctive character being either commonly used decorative elements in trade and having a laudatory connotation in the case of the smiley or being descriptive even for the average consumer having basic knowledge of chemistry in the case of the hexagons. Further, considering that in general consumers tend to focus on the beginning of a sign when they encounter a trade mark, overall the marks are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of their first three out of four syllables, namely GREEN-CHE-MI and merely differ in their last syllable STRY’ versus ‘*CALS’. Considering that these endings are significantly shorter than the identical initial part of the marks and are placed in a less prominent position at the ends of the marks, the signs are aurally highly similar.
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. Although the smiley and the hexagons will be understood by the public, their impact is limited insofar they are laudatory and make reference to the nature of the goods.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
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, the goods are partly identical and partly similar. The signs are visually and aurally similar to a high degree on account of the elements ‘GREEN CHEMI’ which are coinciding at the beginning of the signs. The differences between the signs are less noticeable or will have less impact on consumers since they are placed at the end of the signs and are confined to elements that will not help them to differentiate the signs either because of their limited distinctiveness or because they are elements commonly used in trade. Furthermore, the conceptual aspect does not contribute to put distance between the signs since neither of them has any meaning.
It must also be pointed out that likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse two signs directly, believe that they come from the same undertaking or from economically related ones. Indeed, it is common practice, on the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal (words and numbers) or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image.
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 Spanish trade mark registration No 2 935 457 trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.
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
Adrianna VAN ROODEN
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.