OPPOSITION No B 2 458 514

S.C. Policolor SA, Bd. Theodor Pallady No. 51, Sector 3, 032258 Bucharest, Romania (opponent), represented by Marilena Comanescu, 4 Plata Doronbanti, B Entrance, 2nd floor., Ap. 8 Sector 1, 010588 Bucharest, Romania (professional representative)

a g a i n s t

Polikor Boya ve Kimya Sanayi Ticaret Anonim Sirketi, Izmir Yolu, 28. km, Nilufer – Bursa, Turkey (applicant), represented by Silex IP, Calle Velázquez 109, 2º D, 28006 Madrid, Spain (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.         Opposition Decision No B 2 458 514 notified to the parties on 22/02/2017 is hereby revoked.

2.        Opposition No B 2 458 514 is partially upheld, namely for the following contested goods and services:

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; unprocessed polyester resins; glaziers’ putty; acrylic polymer powders; chemicals for use in manufacturing of paints; chemicals for use in manufacturing of plasters.

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; primers; varnishes; thinners for paints; acrylic paints; water-repellent paints.

Class 35:        The bringing together, for the benefit of others, of 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; the bringing together, for the benefit of others, of adhesives used in industry, unprocessed polyester resins, glaziers’ putty, acrylic polymer powders, water-repellent paints, of chemicals for use in manufacturing of paints, chemicals for use in manufacturing of plasters, paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, mordants, raw natural resins; the bringing together, for the benefit of others, of metals in foil and powder form for painters, decorators, printers and artists, primers, varnishes, acrylic paints, water-repellent paints (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

3.        European Union trade mark application No 13 199 393 is rejected for all the above goods and services. It may proceed for the remaining services:

Class 35: Advertising; business management; business administration; office function; bringing together, for the benefit of others, of thinners for paints (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes

4.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 199 393. The opposition is based on, inter alia, international trade mark registration No 1 073 880 designating Bulgaria, Croatia, the Czech Republic, Estonia, Greece, Hungary, Slovakia and Slovenia, as well as Romanian trade mark registration No M 2010 000 964. The opponent invoked Article 8(1)(b) EUTMR for both earlier rights and Article 8(5) EUTMR in relation to the Romanian trade mark registration.

DECISION ON THE REVOCATION – ARTICLE 80 EUTMR

In accordance with Article 80 EUTMR, where the Office has made an entry in the Register or taken a decision that contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked. Revocation shall be determined within six months from the date on which the decision was taken, after consultation with the parties to the proceedings.

In the present case the decision was taken on 22/02/2017 and the Office determined the need to revoke it on 22/03/2017, i.e. within six months. On 22/03/2017, the Office informed the parties that it had the intention to revoke the decision of 22/02/2017. The reason was that the Office incorrectly cited in the dictum of the decision, point 2, services for which the EUTMA should proceed to registration, namely the following services:

Class 35:  bringing together, for the benefit of others, of thinners for paints (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes

that should proceed to registration, as correctly stated in point 3 of the dictum.  

In accordance with Article 80 EUTMR, the Office gave the parties until 22/05/2017 to submit observations. The parties did not submit any observations.

Therefore, the decision adopted by the Opposition Division on 22/02/2017 in Opposition Decision No B 2 458 514 is herewith revoked and is replaced by the present decision.

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 international trade mark registration No 1 073 880 designating, inter alia, Bulgaria.

1. The goods and services

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.

The contested goods and services 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; unprocessed polyester resins; glaziers’ putty; acrylic polymer powders; chemicals for use in manufacturing of paints; chemicals for use in manufacturing of plasters.

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; primers; varnishes; thinners for paints; acrylic paints; water-repellent paints.

Class 35: Advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of 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; the bringing together, for the benefit of others, of adhesives used in industry, unprocessed polyester resins, glaziers’ putty, acrylic polymer powders, water-repellent paints, of chemicals for use in manufacturing of paints, chemicals for use in manufacturing of plasters, paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, mordants, raw natural resins; the bringing together, for the benefit of others, of metals in foil and powder form for painters, decorators, printers and artists, primers, varnishes, thinners for paints, acrylic paints, water-repellent paints (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

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, namely for the services in Class 35, indicates that the specific 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

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 are identically contained in both lists of goods and services.

The contested unprocessed polyester resins are included in the broad category of the opponent’s unprocessed artificial resins. Therefore, they are identical.

The contested glaziers’ putty; acrylic polymer powders; chemicals for use in manufacturing of paints; chemicals for use in manufacturing of plasters are included in the broad category of the opponent’s chemicals used in industry. Therefore, they are identical.

Contested goods in Class 2

The contested paints, varnishes (listed twice), 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 are identically contained in both lists of goods and services.

The contested primers; acrylic paints; water-repellent paints are included in the broad category of the opponent’s paints. Therefore, they are identical.

The contested thinners for paints are liquids, such as turpentine, that are added to paint or varnish to dilute it or to reduce its viscosity. The goods usually coincide with the opponent’s paints in their relevant publics and distribution channels, namely stores for paints and supplies, as well as in their manufacturers. Furthermore, the goods are naturally complementary to each other, since thinners for paints are used, in particular, as paint solvents. Therefore, thinners for paints are similar to the opponent’s paints.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The contested 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; unprocessed polyester resins; glaziers’ putty; acrylic polymer powders; chemicals for use in manufacturing of paints; chemicals for use in manufacturing of plasters in Class 1, as well as the contested 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; primers; varnishes; acrylic paints; water-repellent paints in Class 2, are considered identical to the opponent’s goods in Classes 1 and 2.

Therefore, the contested the bringing together, for the benefit of others, of 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; the bringing together, for the benefit of others, of adhesives used in industry, unprocessed polyester resins, glaziers’ putty, acrylic polymer powders, water-repellent paints, of chemicals for use in manufacturing of paints, chemicals for use in manufacturing of plasters, paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, mordants, raw natural resins; the bringing together, for the benefit of others, of metals in foil and powder form for painters, decorators, printers and artists, primers, varnishes, acrylic paints, water-repellent paints (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are similar to a low degree to the relevant goods present in the opponent’s lists of goods in Class 1 and 2, as shown above.

However, similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case for the contested thinners for paints, which are only similar to the opponent’s goods. Since the goods at issue are only similar, the contested bringing together, for the benefit of others, of thinners for paints (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are dissimilar to all the opponent’s goods. Apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. The contested services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

On the other hand, the contested advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

The contested advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods in Classes 1 and 2 that may be advertised.

The contested business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The contested business administration is intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

The contested office functions are the internal day-to-day operations of an organisation, including administration and support services in the ‘back office’. They mainly involve activities that assist in the running of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

All these business, administration and office-related services differ from the opponent’s goods, in particular chemical substances, paints, varnishes, colorants, etc. Aside from the fact that goods and services have a different nature, the abovementioned contested services target different publics, in particular business consumers as opposed to construction workers and professionals, have different distribution channels, for instance advertising agencies and business consultancy houses as opposed to construction and building stores and chains, and have different methods of use and intended purposes, as referred to above. In addition, the goods and services in question are not complementary to or in competition with each other, as might be the case in the examples given above for retail services. Therefore, the contested business management; business administration; office functions are considered dissimilar to all the opponent’s goods.

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 to various degrees are directed at the public at large, as well as at a professional public with a certain knowledge of and expertise in the chemical industry and particularly in the field of construction work. The degree of attention may vary between average and high depending on whether or not there is any risk involved in applying the relevant goods. For example, the degree of attention may be average in relation to paints and varnishes purchased by specialists or DIY (do-it-yourself) consumers. However, a higher degree of attention may be required in the purchase of chemical substances and mixtures for the industry, where a more cautious treatment or higher safety standards are usually involved.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 earlier mark is a figurative mark consisting of the word ‘Policolor’ depicted in white title case letters in a fairly standard typeface against a light blue rectangular background.

The contested sign is a figurative mark consisting of the word ‘Polikor’ written in white title case letters with a black outline against a dark blue rectangular background.

Both signs are composed of more distinctive verbal elements, ‘Policolor’ and ‘Polikor’, and less distinctive figurative elements of a purely decorative nature, namely the blue rectangular backgrounds mentioned above. Therefore, the verbal elements are more distinctive than the figurative elements.

Neither sign has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they coincide in their initial and final letters, namely ‘POLI*OR’. The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, the signs differ in their fifth letters, namely ‘C’ in the earlier mark and ‘K’ in the contested sign, as well as in the additional two following letters, ‘OL’, of the earlier mark, which have no counterparts in the contested sign. Furthermore, they differ in their decorative elements and stylisation, as described in more detail above. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘POLI*OR’ present identically in both signs. Furthermore, taking into account that most of the Bulgarian-speaking part of the public will pronounce the letter ‘C’ as ‘K’, in terms of the most adequate transliteration, the signs will further coincide in the pronunciation of their fifth letters, namely ‘C’ in the earlier mark and ‘K’ in the contested sign. Consequently, the pronunciation will differ only in the sound of the additional letters ‘OL’ of the earlier mark, which have no counterparts in the contested sign. Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory as a whole. 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.

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 goods and services 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 a decorative element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The conflicting goods and services are partly identical, partly similar to different degrees and partly dissimilar, and the degree of attention varies from average to high for the reasons already mentioned above in section b).

The signs are aurally and visually similar to an average degree to the extent that they coincide in the string of letters ‘POLI*OR’. They differ in their fifth letters, ‘C’ and ‘K’, as well as in the additional two letters ‘OL’ of the earlier mark. Furthermore, the signs’ letters are slightly stylised and depicted against rectangular backgrounds in various shades of blue. However, the Opposition Division does not consider that these differentiating elements are sufficient to counteract the overall impression of similarity conveyed on visual and aural levels.

First, it was noted above that the signs consist of distinctive verbal elements and decorative elements that have no significant impact on the overall perception of the marks. Consequently, the relevant public will not pay particular attention to the differentiating figurative elements but will instead focus on the verbal elements ‘Policolor’ and ‘Polikor’. Nevertheless, for the sake of completeness, it must be mentioned that both signs are written in white title case letters against blue rectangular backgrounds, which would rather contribute to finding more similarity between them.

Second, it has been noted that the signs have identical beginnings, namely the letter string ‘POLI’, and on an aural level this is reinforced by the fact that the following letters, namely ‘C’ and ‘K’, will be pronounced in the same way by most of the relevant public (as ‘K’). Furthermore, attention was also drawn to the fact that the signs have identical endings, namely ‘OR’. Consequently, the different letters, which are placed in non-prominent positions, namely in the middle of the signs between identical beginnings and endings, may be easily overlooked or misheard by the relevant consumers. In that case, account also has to 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).

In addition, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, most of the goods at issue are identical, and this fact may counterbalance the small differences between the signs when the goods in question are being purchased. There is also a likelihood of confusion with regard to the goods that are similar to a low degree, as the signs have been found to be sufficiently similar.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 073 880 designating Bulgaria.

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

The rest of the contested services are dissimilar. 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks, for which the opponent invoked Article 8(1)(b) EUTMR:

• International trade mark registration No 1 052 515 designating Bulgaria, Croatia, the Czech Republic, Estonia, Greece, Hungary, Slovakia and Slovenia for the figurative mark ;
• international trade mark registration No 1 052 943 designating Bulgaria, Croatia, the Czech Republic, Estonia, Greece, Hungary, Slovakia and Slovenia for the figurative mark .

Since these marks are similar to the one which has been compared and cover the same or a narrower scope of goods (namely in Classes 1 and 2), the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

As far as international trade mark registration No 939 052 designating the European Union for the figurative mark  is concerned, the Opposition Division notes that on 30/10/2015 the opponent withdrew that right as a basis of the present opposition. Therefore, it cannot be taken into account.

European Union trade mark application No 10 277 176 is still the subject of a pending registration and cannot be taken into account. For the sake of completeness, it has to be noted that this earlier right has no broader protection and it would have had no effect on the outcome in the present proceedings either.

Furthermore, the opponent also based its opposition on the following earlier trade marks:

• Romanian trade mark registration No M 2010 000 964 for the word mark ‘Policolor’, registered for goods in Classes 1 and 2;
• Romanian trade mark registration No M 2010 00 990 for the figurative mark , registered for goods in Classes 1 and 2;
• Romanian trade mark registration No M 2010 08 819 for the figurative mark , registered for goods in Classes 1 and 2,

for which the opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR and for which the opponent claimed reputation in Romania for the relevant goods mentioned above.

The same conclusions noted above apply to these earlier marks insofar as Article 8(1)(b) EUTMR was invoked. However, the Opposition Division will proceed with the examination of these rights under Article 8(5) EUTMR in relation to the services found to be dissimilar and for which the opposition has been rejected in the present section of this decision.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Romanian trade mark No M 2010 000 964 for the word mark ‘Policolor’, for which the opponent claimed reputation in Romania.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Romania.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 26/08/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Romania prior to that date. The evidence must also demonstrate that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 1:        Chemicals used in industry, science; unprocessed artificial resins; adhesives used in industry        

Class 2:        Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 25/01/2016, the opponent submitted the following evidence:

1. an extract from the opponent’s official website, www.policolor.ro, containing brief information and various chronological events from the history of the company and the brand ‘Policolor’ from 1965 to 2011. Furthermore, an extract was submitted from the section www.architectural.policolor.ro revealing from the opponent’s company profile that the opponent has been operating in the last 50 years as a varnish and paints manufacturer;

2. extracts from a number of brochures of construction stores, in particular from ‘Brick – materiale de contstructii’, containing an image of paint supplies bearing the mark ‘Policolor’; the brochure concerns the period 20/07/2014 to 16/08/2014; extracts from ‘Hornback’, dated May 2013 and September 2013, where images of buckets of paint or related painting substances may be seen with the opponent’s mark, ‘Policolor’, affixed to them; and extracts from ‘Leroy Merlin’, dated June–July, 2013;

3. a list of the opponent’s store locations in Romania (11 in total), located in Bucharest, Sibiu, Timisoara, etc., as well as a list of the opponent’s key account clients, including distribution chains such as Praktiker, Baumax, Dedeman, Bricoexpert, Hornbach and Leroy Merlin. Furthermore, the opponent has also submitted pictorial evidence of some of the stores located in the territory of Romania;

4. copies of two decisions of the Romanian Patent and Trademark Office, dated 17/10/2012 and 31/10/2012, with a brief reference to the fact that the opponent’s brand ‘Policolor’ meets the legal criteria of the applicable legislation to be considered a reputable mark;

5. extracts from an article published at www.revistaBiz.ro, on 10/09/2014, with a list of the ‘Top 100 Romanian brands’, where the opponent’s brand is ranked in the 85th position. According to the opponent, the article is called ‘Romanian brands – the strength of a hundred brands’; however, no additional translation of the content into English was submitted;

6. extracts from a brochure showing a product, namely a paint, bearing the brand ‘Policolor’ and the additional sub-brand ‘SPOR’;

7. extracts from Wikipedia with information about a particular district in the city of Bucharest, containing a statement in the ‘Transportation’ section that a new metro station was named ‘Policolor’. Further extracts have been submitted from the public transport web page illustrating the existing stop of the Bucharest Metro, as claimed, and from a page of Western Union with a reference to a bank branch using the name ‘Policolor’;

8. articles from three or four web pages of Romanian media, published in the time frame April–May 2014, with references to the opponent’s business activity expanding to Bulgaria in particular;

9. extracts from Google and Yahoo illustrating the search results for the opponent’s brand;

10. extracts from the opponent’s website illustrating various social initiatives of the opponent dated between 2007 and 2010, in particular ‘Policolor – Partner of Traffic Police Department’ in the programme ‘STOP accidents = Life has priority’; ‘KLAR Professional Division’; together with organisations such as ‘Responsible Care’, etc.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation in the relevant territory.

Despite showing some use of the trade mark ‘Policolor’, the evidence provides little information on the extent of such use that may be verified by external sources or trustworthy third parties. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public and, furthermore, it does not indicate any sales volumes or the market share of the trade mark; neither does it show the extent to which the trade mark has been promoted in Romania.

As mentioned above, most of the evidence produced by the opponent derives, in particular, from the interested party itself, namely items a., c., f., i. and j., which originate from the opponent’s official website or from internal documents.

The independent articles mentioned in item h. do not reflect the opponent’s business activity in the relevant territory but rather refer to other countries, in particular Bulgaria, which are not subjects of the present assessment. Furthermore, according to the opponent, the independent survey submitted as item e. is, first, dated outside the relevant period and has, second, an unclear character and low degree of reliability, as the opponent did not submit any relevant translation in the language of the proceedings that might indicate the relevant criteria and approach for conducting the survey.

In item g., the opponent claims that its name has been used to designate various locations in Bucharest. However, this fact on its own does not possess a highly probative value, as no recognition of the opponent’s brand was demonstrated in relation to the goods offered by the opponent. Consequently, it is speculation that the relevant consumers might recognise the name ‘Policolor’ as a large Romanian manufacturer of paints and varnishes.

Insofar as decisions of the Romanian national office are concerned (d.), it must be pointed out that, even though national decisions are admissible evidence and may have evidentiary value, especially if they originate from a Member State the territory of which is also relevant to the opposition in question, they are not binding on the Office, in the sense that it is not mandatory to follow their conclusion. It must be borne in mind that ‘the EU trade mark system is an autonomous system, consisting of a set of rules and objectives that are specific, and applied independently of any national system’ (17/12/2010, T-192/09, Seve Trophy, EU:T:2010:553, § 79).

As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation among the Romanian public.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Volker MENSING

Patricia LOPEZ FERNANDEZ DE CORRES

Dorothée SCHLIEPHAKE

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.