OPPOSITION DIVISION
OPPOSITION No B 2 573 221
ORO-Produkte Marketing International GmbH, Im Hengstfeld 47, 32657 Lemgo,
Germany (opponent), represented by Boehmert & Boehmert
Anwaltspartnerschaft Mbb – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209
Bremen, Germany (professional representative)
a g a i n s t
Oro Agri International Ltd, Bankastraat 75, 9715CJ Groningen, Netherlands
(applicant), represented by Madelein Kleyn, Oro Agri International Ltd, Bankastraat
75, 9715CJ Groningen, Netherlands (employee representative).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 573 221 is upheld for all the contested goods.
2. European Union trade mark application No 14 399 661 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 399 661 for the word mark ‘ORO-WASH’. The opposition is based
on, inter alia, European Union trade mark registration No 9 914 251 for the word
mark ‘ORO frisch aktiv’. The opponent invoked Article 8(1)(b) EUTMR.
ADMISSIBILITY of Article 8(5) EUTMR as opposition ground
According to Article 2(2)(c) EUTMDR, the notice of opposition shall contain the
grounds on which the opposition is based, namely a statement to the effect that the
respective requirements under Article 8(1), (3), (4) (4a), and (5) EUTMR are fulfilled.
In particular, the grounds are to be considered properly indicated if one of the
relevant boxes in the notice of opposition form is checked or if they are indicated in
any of its annexes or supporting documents. The grounds are also considered to be
properly indicated if the earlier marks are identified and it is possible to unequivocally
identify the grounds and the opposition as based on Article 8(1) EUTMR.
Decision on Opposition No B 2 573 221 page: 2 of 7
On 03/09/2015, the opponent filed notice of opposition against the contested
application. However, the opponent failed to indicate Article 8(5) EUTMR as the basis
of opposition. The only ground indicated in the notice of opposition was Article
8(1) (b) EUTMR. Article 8(5) EUTMR was claimed as a basis of opposition only in the
opponent’s submissions of 24/03/2016, which was after the expiry of the three month
period for filing a notice of opposition. Considering the foregoing, the opposition is
considered inadmissible insofar as it is based on Article 8(5) 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 opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registration No 9 914 251.
a) The goods
The goods on which the opposition is based are the following:
Class 1: Water-softening preparations; Bleaching preparations, all included in class
1, except chemicals used in the electrolytic plating of precious metals or for use in oil
refining or the for manufacture of petroleum-based chemicals; Water softeners for
washing machines, regeneration salts for dishwashers; Water purifying and care
preparations.
Class 3: Specialist curtain washing preparation; Bleach (bleaching preparations);
Preparations for dishwashing purposes; Cleaning and polishing preparations;
Cleaning, polishing, scouring and abrasive preparations; Soaps; Cleaning and care
preparations, namely polishing, scouring and/or abrasive preparations for surfaces of
wood, plastic, glass, lacquers, metal, and for textile and ceramic surfaces; Household
cleaning preparations in solid, liquid, powder and paste form, other than for cleaning
precious metals; Floor cleaning and care preparations; Furniture maintenance
preparations; Lavatory cleaning compositions; Washing up liquid, Cleaning
preparations for dishwashers; Rinsing agents; Abrasive detergents; Cleaning
preparations for general use, Household detergent, Carpet-cleaning preparations;
Upholstery cleaning preparations, cleaning preparations for industrial applications;
Floor cleaning preparations, wax and polymer removal preparations, intensive power
cleaning preparations, solvent cleaners, industrial sweeping compounds, oil
sweeping compounds, wax sweeping compounds and emulsion sweeping
compounds; Perfumery, essential oils, cosmetics, hair lotions; Cosmeceuticals;
Perfumery; Hair lotions; Dentifrices; Dental care preparations; Shampoos and hair
care preparations; Personal deodorants; Stain removers; Bleaching salt; Chemical
care preparations for surfaces of wood, plastic, glass, lacquer or metal, and textile
and ceramic surfaces.
Class 21: Combs and sponges; Brushes (except paint brushes);Auxiliary agents for
cleaning, namely sponge cloths, scrapers for glass ceramics, cooking surfaces and
Decision on Opposition No B 2 573 221 page: 3 of 7
spare blades for the aforesaid scrapers, hand-operated cleaning apparatus, namely
spray cleaners for cleaning carpets using extraction processes; Articles for cleaning
purposes; Articles for cleaning purposes, Namely brooms, Brushes, Sponges,
Cleaning, polishing and Cleaning cloths; Polishers, Polishing apparatus and
machines for household purposes, non-electric; Polishing materials for making shiny,
except preparations, paper and stone.
After a limitation of the scope of protection by the applicant, the contested goods are
the following:
Class 3: Compositions for cleaning of agriculture equipment, tank washing, descaling
and degreasing, degreasing or cleaning of factory floors.
Class 5: Disinfectant for agricultural equipment; Industrial cleaner.
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.
The applicant argues that the parties have different fields of activity in which the
goods cannot be seen to be very similar. According to the applicant, its goods are
aimed at disinfecting and/or cleaning industrial factory and equipment,
while the opponent is active in the field of home care products. It submits also some
pictures of the opponent’s goods. The Opposition Division notes that the comparison
of the goods and services must be based on the wording indicated in the respective
lists of goods/services. Any actual or intended use not stipulated in the list of
goods/services is not relevant for the comparison since this comparison is part of the
assessment of likelihood of confusion in relation to the goods/services on which the
opposition is based and directed against; it is not an assessment of actual confusion
or infringement (16/06/2010, T-487/08, ‘Kremezin’, EU:T:2010:237, § 71). Therefore,
this argument of the applicant has to be set aside.
Contested goods in Class 3
Compositions for cleaning of agriculture equipment, tank washing, descaling and
degreasing, degreasing or cleaning of factory floors are included in the broad
category of, or overlap with, the opponent’s cleaning, polishing, scouring and
abrasive preparations. Therefore, they are identical.
Contested goods in Class 5
The contested disinfectant for agricultural equipment; Industrial cleaner are similar to
the opponent’s cleaning preparations in Class 3. These goods have similar purpose
and method of use. They have the same distribution channels and origin.
b) 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 specialised goods
directed at business customers with specific professional knowledge or expertise.
Decision on Opposition No B 2 573 221 page: 4 of 7
The degree of attention is average.
c) The signs
ORO frisch aktiv ORO-WASH
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 common element ‘ORO’ is not meaningful in certain territories, for example in
those countries where Spanish, Portuguese or Italian is not understood.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the German-speaking part of the public.
Both marks are word marks. The applicant argues that the opponent uses its mark in
distinctive colours of its brand which is red and blue and submits examples of such a
use of the market. It needs to be noted however that when assessing identity or
similarity, the signs have to be compared in the form in which they are protected, that
is, in the form in which they are registered/applied for. The actual or possible use of
the registered marks in another form is irrelevant when comparing signs (09/04/2014,
T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38).
The element ‘ORO’ present in both marks has no meaning for the relevant public and
is, therefore, distinctive.
The element ‘FRISCH’ of the earlier sign is a German word which means ‘fresh’. The
element ‘AKTIV’ of the earlier sign is also a German word which means ‘ACTIVE’.
Bearing in mind that the relevant goods are cleaning-related, these elements are
non-distinctive for these goods.
The element ‘WASH’ of the contested sign is a basic English word and it will be
associated with the concept of cleaning something by using water, soap or other
detergent. Bearing in mind that the relevant goods are cleaning-related, this element
is weak for these goods.
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
Decision on Opposition No B 2 573 221 page: 5 of 7
placed at the left of the sign (the initial part) the one that first catches the attention of
the reader.
Visually and aurally, the signs coincide in ‘ORO’ which is distinctive and appears at
the beginning of the signs. However, they differ in the non-distinctive or weak verbal
elements of both signs, namely ‘FRISCH AKTIV’ of the earlier sign and ‘WASH’ of the
contested sign. From the visual point of view the signs also differ in the hyphen
present in the contested sign.
Therefore, the signs are visually and aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. The signs are not conceptually similar; however, this
is not particularly relevant since the meanings arise from non-distinctive or weak
elements.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 claimed that the earlier trade mark enjoys enhanced distinctiveness
but did not file any evidence in order to prove such a claim.
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, despite the presence of some non-distinctive elements in the mark, as stated
above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The signs are considered visually and aurally highly similar, as they coincide in the
distinctive element ‘ORO’ and differ in the remaining weak or non-distinctive
elements.
Taking into account all the relevant factors of the case, including the average degree
of distinctiveness of the earlier mark and the fact that the marks coincide in their
beginnings, it is considered that the visual and aural similarities between the signs
are sufficient to counteract the dissimilarities resulting from the weak or non-
distinctive elements at the end of the signs. It is, therefore, likely that the relevant
public, on being exposed to the use of both signs in relation to identical and similar
goods would think that the goods for which the contested sign is used were produced
by the same undertaking as the goods distributed under the earlier mark. Indeed, it is
highly conceivable that the relevant consumer will perceive the contested mark as a
sub-brand, a variation of the earlier mark, configured in a different way according to
the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262,
§ 49).
In its observations, the applicant argues that the earlier trade mark has a low
distinctive character given that many trade marks include the element ‘ORO’. In
Decision on Opposition No B 2 573 221 page: 6 of 7
support of its argument the applicant refers to several trade mark registrations in the
European Union.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of register data only, it cannot be assumed
that all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include ‘ORO’. Under these
circumstances, the applicant’s claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the
German-speaking 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 9 914 251. It follows that the contested trade mark
must be rejected for all the contested goods.
As the earlier right European Union trade mark registration No 9 914 251 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods against which the opposition was directed, there is no need to examine the
other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Anna BAKALARZ Katarzyna ZANIECKA Begoña URIARTE
VALIENTE
Decision on Opposition No B 2 573 221 page: 7 of 7
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.