OPPOSITION No B 2 524 901

Compagnie des Gaz de Petrole Primagaz, Tour Opus 12, 77 Esplanade du Général de Gaulle, 92081 Paris La Défense Cedex, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Pt. Pertamina Lubricants, Oil Centre Building, 6th Floor, JL.MH Thamrin Kav. 55, Jakarta 10350, Indonesia (applicant), represented by J. Lopez Patentes y
Marcas S.L., C/. Paz nº 14-2º-3ª, 46003 Valencia, Spain (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 524 901 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 605 051 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 605 051 for the figurative mark . The opposition is based on, inter alia, French trade mark registrations No 4 017 711 for the word mark ‘PRIMA’ and No 3 812 250 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In the notice of opposition filed on 11/05/2015, the opponent based the opposition on four earlier trade mark registrations including French trade mark No 1 338 930 for the word mark ‘PRIMA’ and the European Union trade mark No 3 540 119 for the figurative trade mark .

However, on 05/10/2016, after a proof of use request, the opponent withdrew these two earlier rights as basis of the opposition. Accordingly, the opposition proceedings continued based on the two earlier rights cited above, under the REASONS section.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

In the present case the contested trade mark was published on 10/02/2015.

Concerning earlier French trade mark No 4 017 711 and European Union trade mark No 3 812 250, these earlier rights were registered on 25/10/2013 and 28/10/2011, respectively. Therefore, the request for proof of use is inadmissible as far as these earlier rights are concerned and the opponent was not under the obligation of filing evidence of use regarding these two earlier trade mark registrations.

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 and services

The services on which the opposition is based are, inter alia, the following:

French TM No 4 017 711

Class 39: Transport; packaging and storage of goods: arranging of tours; transportation information; delivery of newspapers; water or energy distribution; towing; rental of garages or parking places; rental of vehicles, boats or horses; taxi services; travel reservation; physical storage of electronically-stored data or documents. Energy supply for others; technical consultation relating to energy distribution.

Class 40: Sawing; dressmaking; printing; material treatment information; embroidery; soldering; burnishing by abrasion; planing; refining services; grinding; flour milling; engraving services; galvanization; gilding services: tin-plating; dyeing services; clothing alteration: treatment of textiles: bookbinding services; framing of works of art; air purification: vulcanization (treatment of materials); decontamination of hazardous materials; production of energy; photographic printing; photographic film development; silkscreen printing; photoengraving services; glass blowing; taxidermy; waste treatment (transformation); sorting of waste and recyclable material (transformation), energy production.

French TM No 3 812 250

Class 35: Advertising services, radio and TV advertising, online advertising on computer network; advertising agency; dissemination of advertising material (tracts, samples, prospectuses, printed matters, free newspapers), diffusion of advertising publications, services of advertising messages insertion, advertising mail, publication of advertising texts, sales promotion services for others, rental of advertising spaces, rental of advertising spaces, rental of advertising time on a communication mean. Assistance to the industrial and commercial enterprises in conducting their business, consulting in business organization, direction or information, compilation of informations, economical forecast, market study and research; collecting of data in a central file, management of computer files, computer unballastring services, administrative management of computers; newspaper subscription services for others; secured data entry services for electronic media; exploitation of patents, namely, transfer of commercial know-how.

The contested goods and services are the following:

Class 4: Flux oils; Marine oils; Synthetic oils; Mazut; Isolating oils; Mineral oils; Lubricating oil; Shock absorbing oils; Heavy oils; Light oils; Motor oil; White oils; Lubricants; Synthetic lubricants; Lubricating fluids; Lubricating oil; Lubricating grease; Industrial grease; Lubricating oils (industrial lubricants); Lubricating grease; Spray-on lubricants; Lubricants for machines; Motor vehicle lubricants; Mineral lubricating oils; Lubricants for cables; Lubricating graphite; Duct lubricants; Drilling lubricants; Lubricants for metal working; Motor vehicle lubricants; Lubricants of synthetic origin; Petrol additives [petrochemical]; Non-chemical additives for coolants; Non-chemical fuel additives; Non-chemical additives for hydraulic fluids; Lubricants containing low friction additives; Additive concentrates (Non-chemical -) for lubricants; Non- chemical fuel additives; Non-chemical additives for combustion enhancers; Oils containing water dispersant additives; Non-chemicals additives for motor fuels; Non-chemicals additives for motor oils; Oils containing rust preventing additives; Non-chemical additives for transmission oils; Non-chemical additives for petroleum products; Non-chemical additives for cutting oils; Non-chemical additives for engine oils; Oils for use as additives to heating oils; Industrial grease; Industrial oils being quenching oils; Lubricating oils (industrial lubricants); Industrial oils for the lubrication of surfaces; Non-mineral oils for industrial purposes (not for fuel); Fuels; Fuel mixtures; Manufactured solid fuels; Mazut; Liquid fuels; Fuel gas; Fuel gas; Fuels; Fossil fuels; Combustible waxes; Combustible materials; Mineral fuel; Fuel oil; Combustible products; Ethanol (fuel); Fuel mixtures; Biodiesel fuel; Biofuels.

Class 35: Advertising and marketing; Advertising; Advertising, including online advertising via computer networks; Consultancy relating to the marketing of chemicals; Import and export services; Business consulting services; Business organisation; Business management; Business promotion; Business promotion (advertising); Providing of business and commercial information; Business management and consultancy; Business administration; Wholesaling of fuels; Wholesaling of lubricants; Retailing of lubricants; Retailing of fuels; Dissemination of advertisements.

Class 39: Distribution [transport] of retail goods; Delivery of fuel; Distribution (delivery of goods); Transport services; Storing of goods; Storage of goods; Warehousing of goods; Forwarding of goods; Packaging of goods; Collection of goods.

As a preliminary matter, for the sake of clarity, the correct wording of the applicant’s lists of goods and services under consideration must be identified. In this regard, it should be noted that, according to the version of the list of services of Class 39 in the first language of the EUTM application (which is one of the five languages of the Office, namely Spanish, which means that it will be the definitive version of the list of goods), the contested delivery of fuel; forwarding of goods should read distribution of fuel; transport of goods (i.e. in Spanish: distribución de combustible; transporte de mercancías). Therefore, the wording of the contested list of services in Class 39 is as follows:

Class 39: Distribution [transport] of retail goods; distribution of fuel; distribution (delivery of goods); transport services; storing of goods; storage of goods; warehousing of goods; transport of goods; packaging of goods; collection of goods.

Furthermore, an interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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).

However, the term ‘namely’, used in the opponent’s list of services 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 services.

In addition, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 4

The contested goods flux oils; marine oils; synthetic oils; mazut; isolating oils; mineral oils; lubricating oil; shock absorbing oils; heavy oils; light oils; motor oil; white oils; lubricants; synthetic lubricants; lubricating fluids; lubricating oil; lubricating grease; industrial grease; lubricating oils (industrial lubricants); lubricating grease; spray-on lubricants; lubricants for machines; motor vehicle lubricants; mineral lubricating oils; lubricants for cables; lubricating graphite; duct lubricants; drilling lubricants; lubricants for metal working; motor vehicle lubricants; lubricants of synthetic origin; petrol additives [petrochemical]; non-chemical additives for coolants; non-chemical fuel additives; non-chemical additives for hydraulic fluids; lubricants containing low friction additives; additive concentrates (non-chemical -) for lubricants; non- chemical fuel additives; non-chemical additives for combustion enhancers; oils containing water dispersant additives; non-chemicals additives for motor fuels; non-chemicals additives for motor oils; oils containing rust preventing additives; non-chemical additives for transmission oils; non-chemical additives for petroleum products; non-chemical additives for cutting oils; non-chemical additives for engine oils; oils for use as additives to heating oils; industrial grease; industrial oils being quenching oils; lubricating oils (industrial lubricants); industrial oils for the lubrication of surfaces; non-mineral oils for industrial purposes (not for fuel); fuels; fuel mixtures; manufactured solid fuels; mazut; liquid fuels; fuel gas; fuel gas; fuels; fossil fuels; combustible waxes; combustible materials; mineral fuel; fuel oil; combustible products; ethanol (fuel); fuel mixtures; biodiesel fuel; biofuels are industrial oils, lubricants, fuels and additives. The opponent’s refining services in Class 40 are rendered by the mechanical or chemical processing or transformation of substances.

These goods and services are complementary, as the services are commonly used to refine, produce and treat the goods (such as fuel production in oil refineries, where material is separated from crude oil via distillation). They can target the same public as well, inasmuch as professionals may purchase the goods in Class 4 directly for their own purposes, or buy the services in Class 40 to refine the same goods for the same use. Therefore, these goods are not merely ancillary to these services, but can be sold independently as well. The distribution channels can be the same and these goods and services can be offered by the same companies, such as refineries. They are, therefore, similar.

Contested services in Class 35

Advertising (contained twice in the contested list of services) and advertising, including online advertising via computer networks; business promotion; business promotion (advertising); dissemination of advertisements are identically contained in both lists of services, including synonyms and examples (i.e. including online advertising via computer networks).

The contested marketing; consultancy relating to the marketing of chemicals services are included in the broad category of the opponent’s advertising services. Therefore, they are identical.

The contested import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. As they are classified in Class 35, they are considered to relate to business administration. Therefore, the contested import and export services and also business consulting services; business organisation; business management; providing of business and commercial information; business management and consultancy; business administration are included in the broad category of the opponent’s assistance to the industrial and commercial enterprises in conducting their business, consulting in business organization, direction or information, compilation of informations, economical forecast, market study and research. Therefore, they are identical.

The contested wholesaling of fuels; wholesaling of lubricants; retailing of lubricants; retailing of fuels, which concern the actual sale of fuels and lubricants, include all activities carried out by the trader for the purpose of encouraging the conclusion of such transactions. These services are habitually rendered by the same undertakings conducting the opponent’s refining services in Class 40. In spite of their different nature, the commercial origin and distribution channels coincide as well as the end users. The services are, therefore, similar.

Contested services in Class 39

The contested distribution [transport] of retail goods; distribution of fuel are included in the broad category of the opponent’s transport of goods. Therefore, they are identical.

Distribution (delivery of goods); storing of goods; storage of goods; warehousing of goods; transport of goods; packaging of goods are identically contained in both lists of services (including synonyms).

The contested transport services include, as a broader category, the opponent’s transport of goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested collection of goods is the act of collecting something from a place or from people. These services are complementary to the opponent’s transport of goods as one is indispensable for the provision of the other. Furthermore, they target the same end users and are provided by the same companies, through the same distribution channels. Therefore, these services are similar.

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 and services 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 and services, or the terms and conditions of the purchased goods and services.

3. The signs

French TM No 4 017 711 ‘PRIMA’ French TM No 3 812 250
Earlier trade marks	Contested sign

The relevant territory is France.

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 word ‘PRIMA’ composing the earlier marks does not exist as such in French. Therefore, it has no meaning for the relevant public and is distinctive in the context of the relevant services.

However, as stated by the General Court in its Judgement of 24/09/2015, T-195/14, PRIMA KLIMA, EU:T:2015:681, at least one part of the French relevant public may associate the term ‘prima’ with the French adjectives ‘premier’ (first) or ‘primaire’ (primary) due to their origin in the Latin adjective of number ‘primus/prima’. In addition, the case may be that this element is associated with the Italian expression ‘prima donna’ as it is incorporated in French dictionaries (in the sense of first or principal female singer in an opera). In any case, as it does not describe any characteristic of the relevant services, it is distinctive.

Regarding the contested mark, the same conclusions can be applied to the verbal element ‘Prima’, visually separated from the letters ‘XP’ by their different size and position.

Even if ‘PERTAMINA’ forms part of the name of the applicant, as pointed out by the opponent, it is not likely that the relevant public will grasp any meaning in this word. Therefore, it is distinctive in the context of the relevant goods and services.

However, it cannot be ruled out that the element ‘XP’ of the contested mark could be perceived by the relevant public as a reference to ‘expert’ or ‘expertise’ (same words existing in French) and, thus, as a reference to technical characteristics, as claimed by the opponent. Bearing in mind the nature of the relevant goods and services, this element is weak for the part of the public associating it with this meaning and as regards all the goods and services.

The earlier marks have no elements that could be considered clearly more dominant than other elements.

The element ‘PrimaXP’ together with the yellow oval encircling the letters ‘XP’ in the contested sign are the co-dominant elements as they are the most eye-catching.

Regarding earlier French trade mark registration 1), since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, mainly because the public reads from left to right and from top to bottom, which makes the part placed at the left and top of the sign (the initial part) the one that first catches the attention of the reader. However, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, §  52). In the present case, the difference in the beginning of the signs must have a lowered consideration on account of the co-dominance of the common element ‘Prima’.

Visually, the signs coincide in the distinctive element ‘Prima’, which is written in a fairly standard typeface in earlier mark 2) and in the contested sign. Furthermore, this element constitutes the only element of earlier word mark 1), the only verbal element of earlier mark 2), and is co-dominant in the contested sign.  However, they differ in the distinctive verbal element ‘PERTAMINA’, which is, however, less dominant in the contested mark, in the element ‘XP’, which is weak for at least part of the relevant public, as well as in the stylised depiction and figurative elements of the signs, which perform only a decorative function within the signs and will not draw the consumer’s attention away from the word they embellish.

Therefore, the signs are visually similar to an average degree at least for the part of the public grasping a weak concept in the element ‘XP’.

Aurally, the pronunciation of the signs coincides in the syllables ‘pri-ma’, present identically as a distinctive element in the confronted signs. The pronunciation differs in the sound of the verbal distinctive element ‘PERTAMINA’ and in the weak element ‘XP’ (for part of the relevant public) of the contested mark, which have no counterparts in the earlier signs.

Therefore, the signs are aurally similar to an average degree at least for the part of the public grasping a weak concept in the element ‘XP’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning in the case the common element ‘Prima’ is understood, regardless whether the weak meaning of the element ‘XP’ is understood or not, the signs are conceptually similar to an average degree. The conceptual comparison is not possible and, thus, the conceptual aspect does not influence the assessment of the similarity of the signs in the case neither of the signs has a meaning for the public in the relevant territory.

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 marks

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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks 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 and services are partly identical and partly similar to the services on which the opposition is based. They are directed at the public at large and at business customers with specific professional knowledge or expertise and a degree of attention that will vary from average to high.

It has also been concluded that the signs are visually, aurally and conceptually similar to an average degree as far as they coincide in the element ‘Prima’ and, particularly, in the case where the weak meaning of the element ‘XP’ of the contested mark is perceived by the relevant public, as explained in detail above. The fact that the main difference between the signs is placed at the beginning of the contested mark cannot prevail, in particular on account of the codominance of the common element ‘Prima’. The earlier marks have an average degree of distinctiveness for all the relevant services.

Furthermore, account should be 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).

It should also be borne in mind that 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 and services covered are from the same or economically linked undertakings. 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 and services which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical and similar goods and services. Therefore, on account of the principle of imperfect recollection, the relevant public, despite paying a higher than average degree of attention in connection with part of the goods and services, may believe that these goods and services come from the same undertaking or, at least, economically-linked undertakings.

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 French trade mark registrations No 4 017 711 and No 3 812 250. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

María del Carmen SUCH SÁNCHEZ

Eva Inés PÉREZ SANTONJA

Vít MAHELKA

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.