LIGOCEL | Decision 2552845 – Petr Nohel v. ATLAS Spółka z ograniczoną odpowiedzialnością

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OPPOSITION No B 2 552 845

Petr Nohel, Budínek 80, 26301 Dobříš, Czech Republic (opponent), represented by Daněk & Partners, Vinohradská 17, 120 00 Prague 2, Czech Republic (professional representative)

a g a i n s t

Atlas Spółka z ograniczoną odpowiedzialnością, ul. Świętej Teresy od Dzieciątka Jezus 105, 91-222 Łódź, Poland (applicant), represented by Kancelaria Prawa Własności Przemysłowej I Prawa Autorskiego Teresa Czub & Krzysztof Czub Rzecznicy Patentowi Spółka Partnerska, ul. Reduta Żbik 5, 80-761 Gdańsk, Poland (professional representative).

On 13/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 552 845 is partially upheld, namely for the following contested goods:

Class 1: Chemical products and semi-products used in industry; unprocessed artificial resins, unprocessed plastics; unprocessed chemical substances; binders, adhesives and adhesive mortars; chemical additives for concrete; plasticizers, inoculants, hardeners, chemical compositions for reinforcing concrete, adhesives, bonding agents and agglutinants for concrete, chemical agents for concrete aeration; compositions for dust proofing concrete; retarders for use with concrete; chemical compositions for curing concrete; concrete preservatives, except paints and oils.

Class 2: Binding preparations for paints and lacquers.

Class 17: Synthetic resins, acrylic resins.

2.        European Union trade mark application No 13 254 149 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 254 149, namely against all of the goods in Classes 1 and 2 and some of the goods in Classes 17 and 19. The opposition is based on Czech Republic trade mark registration No 314 426. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Czech Republic trade mark registration No 314 426.

According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case the contested trade mark was published on 20/04/2015, whilst the earlier Czech Republic trade mark No 314 426 was registered on 22/09/2010. Therefore, the request for proof of use is inadmissible.

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: Chemical products for industry, science and photography, as well as for agriculture, horticulture and forestry, artificial resins in raw state, plastics in raw state, soil fertilizers, fire extinguishers (composition), agents for hardening and soldering of metals, chemical products for food preservation, tanning materials, adhesives for industry.

The contested goods are the following:

Class 1: chemical products and semi-products used in industry; unprocessed artificial resins, unprocessed plastics; unprocessed chemical substances; binders, adhesives and adhesive mortars; impregnating agents and preservatives, including those resistant to moisture, silicones; degreasing preparations for use in manufacturing processes, solvents for varnishes; polish-removing preparations and substances; glaziers' putty; chemical additives for concrete; plasticizers, inoculants, hardeners, chemical compositions for reinforcing concrete, adhesives, bonding agents and agglutinants for concrete, chemical agents for concrete aeration; compositions for dust proofing concrete; retarders for use with concrete; chemical compositions for curing concrete; concrete preservatives, except paints and oils.

Class 2: Anti-corrosive preparations; decorative and protective, permanent or temporary agents and compositions for covering surfaces of various types, namely dyes, paints, lacquers, mordants, varnishes; mordants, undercoatings, primers, coatings and paints for priming and reinforcing bases; primers for painting wood, wood preservatives, wood stains and dyes; binding preparations for paints and lacquers; coatings for roofing felt, coatings for roofing; thinners, thickeners and fixatives for dyes, paints, lacquers, stains, oils; colorants for concrete; water dispersed pigments for use in colouring concrete, industrial paints for use on concrete surfaces, concrete sealing agents (paints), concrete sealers (paints), coatings for the finishing of concrete, radiation curable coatings for concrete; coating compositions for preserving concrete [paints or oils]. 

Class 17: Insulating materials, insulating mortars, insulating tape, putty, insulating fabrics, insulating paints and lacquers, metal foil for insulation, substances for insulating buildings against moisture; sealing materials, draught excluder strips for doors and windows; packing materials, cotton wool for packing (caulking), mineral wool, glass wool, non-conducting materials for retaining heat; padding materials of rubber or plastics; gaskets and junctions for pipes; synthetic resins, acrylic resins.

Class 19: Building materials (non-metallic); asphalt, tar and bitumen, bituminous products and coatings for building; concrete, grout, plaster; filler grout; mortars and compounds for building, including for masonry, plastering and pointing cladding; cement for binding elements and filling joints; cement mortars for binding elements and filling joints.

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

The term ‘including’, used in the applicant’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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Chemical products used in industry are identically contained in both lists of goods. Furthermore, the contested unprocessed artificial resins and unprocessed plastics are synonymous terms to the earlier mark’s artificial resins in raw state and plastics in raw state respectively. Consequently, they are identical.

The contested adhesives and adhesive mortars; adhesives for concrete are included in or overlap with the broad category of the opponent’s adhesives for industry. Therefore, they are identical.

The contested chemical additives for concrete; chemical compositions for reinforcing concrete; chemical agents for concrete aeration; chemical compositions for curing concrete are included in the broad category of the opponent’s chemical products for industry. Likewise, the contested plasticizers, inoculants, hardeners for reinforcing concrete; compositions for dust proofing concrete; retarders for use with concrete; concrete preservatives, except paints and oils can all be chemical preparations and consequently they overlap with the opponent’s chemical products for industry. Therefore, these goods are identical.

The contested unprocessed chemical substances overlap with the broad category of the opponent’s chemical products for industry, science and photography, as well as for agriculture, horticulture and forestry. Therefore, they are identical.

The contested chemical semi-products used in industry are highly similar to the opponent’s chemical products for industry as they have a similar nature and purpose and may come from the same manufacturers via the same distribution channels.

The contested binders; bonding agents and agglutinants for concrete are highly similar to the opponent’s adhesives for industry as they have a similar nature, purpose and method of use and may come from the same manufacturers via the same distribution channels.

The remaining contested goods, namely impregnating agents and preservatives, including those resistant to moisture, silicones; degreasing preparations for use in manufacturing processes; solvents for varnishes; polish-removing preparations and substances; glaziers' putty are goods which are dissimilar to the opponent’s Class 1 goods as even though they could be considered to have a degree of similar nature (in other words having a chemical makeup), their purpose and method of use is very different. Furthermore, they target different publics and are unlike to be available via the same sections of the same distribution channels. Finally, they are not complementary or interchangeable.

Contested goods in Class 2

The contested binding preparations for paints and lacquers are additives to paints and lacquers used to improve their adhesive qualities. These goods are similar to the opponent’s adhesives for industry as they may have a similar nature and similar purpose and they may be produced by the same manufacturers and be available via the same distribution channels.

The remaining contested goods, namely anti-corrosive preparations; decorative and protective, permanent or temporary agents and compositions for covering surfaces of various types, namely dyes, paints, lacquers, mordants, varnishes; mordants, undercoatings, primers, coatings and paints for priming and reinforcing bases; primers for painting wood, wood preservatives, wood stains and dyes; coatings for roofing felt, coatings for roofing; thinners, thickeners and fixatives for dyes, paints, lacquers, stains, oils; colorants for concrete; water dispersed pigments for use in colouring concrete, industrial paints for use on concrete surfaces, concrete sealing agents (paints), concrete sealers (paints), coatings for the finishing of concrete, radiation curable coatings for concrete; coating compositions for preserving concrete [paints or oils] can be summarised as all types of anti corrosion preparations, dyes, paints, lacquers, mordants and varnishes. The nature of these goods is that they can be defined as a substance used for decorating or protecting a surface, especially a mixture consisting of a solid pigment suspended in a liquid, that when applied to a surface dries to form a coating.

The earlier mark covers a range of goods in Class 1; in particular, it covers goods such as chemical products for industry and adhesives for industry. The opponent’s goods and the contested ones fall primarily under different types of manufacture; the former relate to raw materials and the latter relate to finished goods. They are sold under different distribution channels and are not in competition with each other. Although it is reasonable to assume that some of the earlier right’s goods are used for the manufacture of the contested goods, due to the fact that they are an ingredient within the coatings (for example the addition of an adhesive mixture to a paint to ensure it adheres to the painted surface), the nature, purpose and method of use of these goods are distinct from one another. The mere fact that one good is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (judgement of 13/04/2011, T-98/09, ‘T Tumesa Tubos del Mediterráneo S.A.’, paragraph 49-51).

In relation to the other goods in Class 1 of the earlier mark which cover chemicals in other fields (e.g. science, agriculture, food preservation), raw resins and plastics, fertilizers, fire extinguishing compositions and metal soldering and hardening agents, they have no relevant points of similarity with the contested goods. Different by nature, they are intended for distinct purposes and have different methods of use. The relevant public would not expect them to originate from the same undertakings and would not seek for them in the same sales outlets. Furthermore, they are neither strictly complimentary nor in direct competition.

Therefore, all the remaining contested goods in Class 2 are dissimilar to all of the opponent’s goods.

Contested goods in Class 17

The contested synthetic resins, acrylic resins are similar to the opponent’s artificial resins in raw state as they have a similar nature, may come from the same manufacturers via the same distribution channels and can target the same end users. Furthermore, they may be in competition with one another.

However, the remaining contested goods, namely insulating materials, insulating mortars, insulating tape, putty, insulating fabrics, insulating paints and lacquers, metal foil for insulation, substances for insulating buildings against moisture; sealing materials, draught excluder strips for doors and windows; packing materials, cotton wool for packing (caulking), mineral wool, glass wool, non-conducting materials for retaining heat; padding materials of rubber or plastics; gaskets and junctions for pipes, are of a different nature and have different purposes and methods of use to those of the opponent. The relevant public would not expect them to originate from the same undertakings and would not seek for them in the same sales outlets. Furthermore, they are neither strictly complimentary and they are neither interchangeable nor are they competition with one another. Therefore, these contested goods are dissimilar to all of the opponent’s goods in Class 1.

Contested goods in Class 19

The contested goods in Class 19, namely building materials (non-metallic); asphalt, tar and bitumen, bituminous products and coatings for building; concrete, grout, plaster; filler grout; mortars and compounds for building, including for masonry, plastering and pointing cladding; cement for binding elements and filling joints; cement mortars for binding elements and filling joints cover non-metallic building materials including concrete, grout, plaster, mortars and cement. Notwithstanding the fact that additives and other preparations for use with concrete, cements and mortars in Classes 1 and 2 have been found identical or similar to the opponent’s Class 1 chemical products for industry because these contested goods can be considered as chemical preparations, this is not the case here with the contested Class 19 products. The opponent’s goods are raw materials for the preparation of final products whilst the contested goods are the end goods. Therefore, they have different purposes, a different method of use and target different consumers via different distribution channels. Neither are they complimentary or in competition with each other and they are not interchangeable. As regards the rest of the opponent’s goods in Class 1, the same reasoning applies. Therefore, all of the contested goods in Class 19 are dissimilar to all of the opponent’s goods in Class 1.

  1. The signs

LIGNOCEL

LIGOCEL

Earlier trade mark

Contested sign

The relevant territory is the Czech Republic.

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).

Both marks are word marks and have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in seven letters ‘LIG(*)OCEL’ which is seven of the earlier mark’s eight letters and all the letters of the contested sign. They differ in the earlier mark’s fourth letter, an ‘N’.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LIG(*)OCEL’, present identically in both signs. The pronunciation differs in the sound of the letter ‘N’ of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are 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.

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

  1. 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.

  1. Global assessment, other arguments and conclusion

The contested goods have been found partially identical, partially similar to various degrees and partially dissimilar. The earlier mark is deemed to have a normal degree of distinctiveness.

In the present case the signs are both unitary word marks and share seven letters, which is all the letters of the contested sign and seven out of the eight letters of the earlier mark, all in the same order. The only difference between the signs is the presence of an ‘N’ as the earlier mark’s fourth letter. The signs have no graphical elements or clearly assigned concepts to assist consumers in differentiating between them.

The difference is located in the middle of the earlier mark, and this is an area where consumers generally tend to focus less when being confronted by a trade mark. Furthermore, the difference in this one letter does not, by itself, introduce sufficient differences into the signs as it neither alters greatly the visual or aural comparison, nor does it create a conceptual difference between the signs that could assist the public in distinguishing between them.

Account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect recollection of them that they have kept in their minds.

Considering all the above, and especially bearing in mind the lack of differentiating elements in the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partially well founded on the basis of the opponent’s Czech Republic trade mark registration No 314 426.

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

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, 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 shall 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

María Clara

IBÁÑEZ FIORILLO

Ric

WASLEY

Erkki

MÜNTER

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.

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