OPPOSITION No B 1 298 290

Osakeyhtiö Six, PL 350, 00521 Helsinki, Finland (opponent), represented by Borenius Attorneys Ltd, Eteläesplanadi 2, 00130 Helsinki, Finland (professional representative)

a g a i n s t

Six Group Oy, Wäinö Aaltosen tie 4, 00570 Helsinki, Finland (holder).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 298 290 is upheld for all the contested goods.

2.        International registration No 923 283 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 923 283 ‘Six’, namely against all the goods in Class 1. The opposition is based on European Union trade mark registration No 4 952 561 . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 1:        Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

The contested goods 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.

All of the contested goods are identically contained in the opponent’s list of 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 found to be identical are directed at the public at large (e.g. amateur gardeners) and at business customers with specific professional knowledge or expertise in the relevant fields such as industry, science, photography, agriculture, horticulture and forestry.

The public’s degree of attentiveness will be higher than average given the level of specialisation of the goods, their price and the frequency of purchase.

3. The signs

	Six
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, which will clearly perceive the word element ‘Six’ in both signs.

The contested sign is a word mark, ‘Six’, which, as such, lacks any dominant element. In addition, in the case of word marks, it is the word as such that is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The earlier figurative mark is a complex sign displaying a fanciful depiction of a griffin. The curve of the back and of the tail of this mythological creature follows practically the same line and is shaded in black. The same black shading is applied to the right front leg of the griffin, which is reminiscent of the grapheme ‘i’, and to a device resembling the grapheme ‘x’, on which the griffin’s left front paw rests. The entire sequence of these black depictions could be perceived by a part of the relevant public as being related to the word ‘Six’. Bearing in mind that that word is English, it is reasonable to affirm that a substantial part of the English-speaking part of the relevant public would perceive the earlier mark as a combination of a depiction of a griffin and the word element ‘Six’. Taking into account that neither of these elements bears a direct meaning in connection with the relevant goods in Class 1 for the English-speaking part of the relevant public, they are deemed equally distinctive. Moreover, the earlier mark has no elements that could be considered clearly more dominant than other elements.

Visually, the verbal element of the earlier mark, ‘Six’, constitutes the sole verbal element of the contested sign. However, the signs differ in the figurative elements and the stylisation of the earlier mark as described above.

Irrespective of the fact that the figurative elements of the earlier mark will draw the attention of the relevant public in the overall impression of the sign, a substantial part of the English-speaking part of the relevant public will identify the word element ‘Six’, which in plain letters would be identical to the contested sign. Moreover, 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). Therefore, the degree of visual similarity varies from low to average.

Aurally, since the signs coincide in their only pronounceable element, the word ‘Six’, they are considered aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their elements. As analysed above, the English-speaking part of the relevant public will perceive in the earlier mark the depiction of a griffin and the word element ‘Six’. To the extent that the earlier mark and the contested sign coincide in the concept of the word element ‘Six’, the signs are considered conceptually similar to an average degree.

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.

In its submissions of 02/01/2017, the opponent essentially claims that its mark enjoys a high degree of distinctiveness, as it contains both figurative and verbal elements that are original and bear no meaning in connection with the relevant goods. In this regard, the Opposition Division notes that the degree of distinctiveness can be enhanced only 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.

5. Global assessment, other arguments and conclusion

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).

According to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspect (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30; 18/10/2007, T-28/05, Omega 3, EU:T:2007:312, § 54).

The contested goods are identical to those covered by the earlier mark. The signs are aurally identical and conceptually similar to an average degree, and the degree of visual similarity varies from low to average. They target the public at large and/or business customers, and the degree of attention is high. As stated above in section c) of this decision, the examination will proceed for the English-speaking part of the relevant public that will perceive the earlier mark as containing the word ‘Six’.

The contested sign consists of the only verbal element of the earlier mark. While it is true that the earlier mark is a complex mark consisting of stylised figurative and word elements (as described in detail in section c) above), this does not preclude the public in the relevant territory from immediately recognising the presence of the English word ‘Six’. In this regard, as recalled above, where a trade mark is composed of verbal and figurative elements, the consumer is likely to focus primarily on the verbal element as a point of reference (18/02/2004, T-10/03, Conforflex, EU:T:2004:46, § 45; 13/07/2005, T-40/03, Julian Murua Entrena, EU:T:2005:285, § 56).

Account is also 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).

Furthermore, taking into account the interdependence principle, the differences between the signs are unable, in the present case, to sufficiently differentiate the overall impressions given by the signs so as to enable the relevant public to safely distinguish between them in the context of identical goods.

Therefore, the Opposition Division is of the opinion that, even considering that the relevant public includes business people or professionals in the relevant area and that some of the goods can be expensive and sophisticated, all of which results in a high degree of attention, the differences between the signs are not sufficient to safely exclude the likelihood of confusion in relation to the identical goods in Class 1.

When encountering the contested sign, consumers may perceive it as the word version of the earlier figurative mark and consequently be led to believe that the goods that are identical originate from the same undertaking or economically linked undertakings.

In their observations, the parties refer to the long history of their conflict, in Finland, concerning trade mark registrations No 59 577 (word mark ‘Six’) and No 72 395 (figurative mark ‘Six’) and the judgment of the Supreme Court, of 06/05/2015, No 798, concerning the ownership of the abovementioned trade mark registrations. Furthermore, the holder submits an outline of historical events in the creation of the opponent’s business name, arguing its lack of locus standi in the present case. To substantiate these claims, both parties filed various pieces of evidence.

In that regard, it must be noted that decisions of national courts regarding conflicts on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399). Accordingly, the registrability of a sign as an EU trade mark is to be assessed on the basis of the relevant legislation alone. Therefore, the decisions adopted in a Member State, or in a State that is not a member of the European Union, are not binding on the Office (24/03/2010, T-363/08, Nollie, EU:T:2010:114, § 52).

The national judgments referred to by the opponent and the history of the opponent’s business name analysed by the holder are not relevant to the present proceedings, as they do not concern the issue of whether or not there is a likelihood of confusion between the conflicting marks. Furthermore, the Office does not engage in interpreting private contracts between the parties. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict, namely European Union trade mark registration No 4 952 561 and international registration designating the European Union No 923 283. Therefore, these arguments in that regard must be set aside.

In addition, as underlined by the opponent in its observations of 07/06/2017, the holder has not submitted any arguments in response to the opponent’s arguments regarding the likelihood of confusion between the conflicting marks.

Considering all the above, and also bearing in mind that the earlier mark has a normal degree of distinctiveness, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public that perceives the earlier mark as containing the word ‘Six’. 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 4 952 561. It follows that the contested international trade mark must be rejected for all the contested goods.

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 holder 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

Pierluigi M. VILLANI

Birgit FILTENBORG

Francesca CANGERI SERRANO

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.