SPECTRUM IMPORT EXPORT LIMITED | Decision 2399866

OPPOSITION No B 2 399 866

Hercules LLC, 500 Hercules Road, Wilmington, Delaware 19808, United States of America, (opponent), represented by Kutzenberger Wolff & Partner, Theodor-Heuss-Ring 23, 50668 Köln, Germany (professional representative)

a g a i n s t

Spectrum Import Export Limited, suite 925A, Europort, Gibraltar, Gibraltar (holder), represented by Jeck & Fleck, Klingengasse 2/1, 71665 Vaihingen/Enz, Germany (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 399 866 is upheld for all the contested goods, namely

Class 1: Nitrogen; alginates for the food industry; amyl acetate; acetic anhydride; anhydrides; disincrustants; starch size [chemical preparations]; astatine; aluminium acetate; lime acetate; lead acetate; acetate of cellulose, unprocessed; acetates [chemicals]; acetylene; oenological bactericides [chemical preparations used in wine making]; balm of gurjun [gurjon, gurjan] for making varnish; albumin [animal or vegetable, raw material]; animal albumen [raw material]; iodised albumen; malt albumen; bentonite; bicarbonate of soda for chemical purposes; bromine for chemical purposes; albuminized paper; baryta paper; diazo paper; blueprint paper; reagent paper, other than for medical or veterinary purposes; nitrate paper; sensitized paper; borax; grafting wax for trees; gas purifying preparations; preservatives for pharmaceutical preparations; polish removing substances; preparations for the separation of greases; substances for preventing runs in stockings; water-softening preparations; limestone hardening substances; tanning substances; adhesives for industrial purposes; artificial sweeteners [chemical preparations]; flower preservatives; seed preserving substances; leather-dressing chemicals; chemical substances for preserving foodstuffs; starch-liquifying chemicals [ungluing agents]; viscose; bismuth; bismuth nitrite for chemical purposes; distilled water; sea water for industrial purposes; seaweeds [fertilizers]; gambier; genes of seeds for agricultural production; hydrates; expanded-clay for hydroponic plant growing [substrate]; kaolin; alumina; glycerides; glycerine for industrial purposes; glucose for the food industry; glucose for industrial purposes; glucosides; gluten for the food industry; gluten for industrial purposes; hormones for hastening the ripening of fruit; peat pots for horticulture; graphite for industrial purposes; guano; humus; dextrine size; detergents for use in manufacturing processes; defoliants; diastase for industrial purposes; kieselgur; manganese dioxide; titanium dioxide for industrial purposes; zirconia; oil dispersants; ceramic compositions for sintering [granules and powders]; additives, chemical, to insecticides; chemical additives for oils; additives, chemical, to fungicides; tan-wood; gelatine for photographic purposes; gelatine for industrial purposes; tree cavity fillers [forestry]; glaziers' putty; diatomaceous earth; fuller's earth for use in textile industry; lime chloride; casein for the food industry; casein for industrial purposes; potassium; sorrel salt; gum arabic for industrial purposes; tartar other than for pharmaceutical purposes; camphor, for industrial purposes; carbide; carbonates; catalysts; catechu; caustics for industrial purposes; alum; quebracho for industrial purposes; oxygen; nitric acid; tartaric acid; gallotannic acid; tannic acid; citric acid for industrial purposes; lactic acid; oleic acid; spirits of vinegar [dilute acetic acid]; oxalic acid; mineral acids; leather glues; gums [adhesives], other than for stationery or household purposes; birdlime; gluten [glue], other than for stationery or household purposes; isinglass other than for stationery, household or alimentary purposes; stem cells other than for medical or veterinary purposes; compost; beer preserving agents; mangrove bark for industrial purposes; tan; starch for industrial purposes; starch paste [adhesive], other than for stationery or household purposes; lactose for the food industry; lactose for industrial purposes; lactose [raw material]; lecithin for the food industry; lecithin for industrial purposes; lecithin [raw material]; oils for tanning leather; oils for currying leather; oils for preparing leather in the course of manufacture; oils for the preservation of food; carbolineum for the protection of plants; paper pulp; wood pulp; grafting mastic for trees; mastic for leather; synthetic materials for absorbing oil; filtering materials [vegetable substances]; vitriol; alkaline-earth metals; metal earths; alkaline metals; flour for industrial purposes; tapioca flour for industrial purposes; potato flour for industrial purposes; soap [metallic] for industrial purposes; bate for dressing skins; emollients for industrial purposes; sodium; gallnuts; purification preparations; wine finings; textile-brightening chemicals; beer-clarifying and preserving agents; must-fining preparations; wax-bleaching chemicals; fat-bleaching chemicals; organic-bleaching chemicals; pectin for the food industry; pectin for industrial purposes; humus top dressing; foundry sand; potash; potash water; earth for growing; bacterial preparations other than for medical and veterinary use; bacteriological preparations for acetification; bacteriological preparations other than for medical and veterinary use; biological preparations, other than for medical or veterinary purposes; currying preparations for leather; currying preparations for skins; plant growth regulating preparations; fulling preparations for use in textile industry; cultures of microorganisms other than for medical and veterinary use; fulling preparations; dehydrating preparations for industrial purposes; degreasing preparations for use in manufacturing processes; degumming preparations; oil-bleaching chemicals; bleaching preparations [decolorants] for industrial purposes; anti-sprouting preparations for vegetables; meat tenderizers for industrial purposes; preparations for stimulating cooking for industrial purposes; preparations of trace elements for plants; moistening [wetting] preparations for use in the textile industry; moistening [wetting] preparations for use in dyeing; moistening [wetting] preparations for use in bleaching; enzyme preparations for the food industry; enzyme preparations for industrial purposes; filtering preparations for the beverages industry; vine disease preventing chemicals; chemical preparations to prevent mildew; chemical preparations for protection against wheat blight [smut]; chemical preparations for smoking meat; preparations of the distillation of wood alcohol; by-products of the processing of cereals for industrial purposes; protein [raw material]; carbon black for industrial purposes; soot for industrial or agricultural purposes; lamp black for industrial purposes; saccharin; saltpeter; sulphur; carbon sulphide; silicates; silicones; acrylic resins, unprocessed; artificial resins, unprocessed; synthetic resins, unprocessed; epoxy resins, unprocessed; soda ash; calcined soda; caustic soda for industrial purposes; barium compounds; fluorspar compounds; calcium salts; sodium salts [chemical preparations]; salt, raw; salts [fertilisers]; salts [chemical preparations]; sauce for preparing tobacco; amyl alcohol; vinic alcohol; wood alcohol; alcohol; ethyl alcohol; cement for footwear; substrates for soil-free growing [agriculture]; sulphates; sulphides; sulphonic acids; sumac for use in tanning; superphosphates [fertilisers]; tannin; biological tissue cultures other than for medical or veterinary purposes; peat [fertiliser]; tragacanth gum for use in manufactures; carbonic hydrates; carbon; activated carbons; carbon for filters; animal charcoal; animal carbon; bone charcoal; blood charcoal; fertilizing preparations; nitrogenous fertilisers; fertilizers; fish meal fertilizers; wood vinegar [pyroligneous acid]; enzymes for the food industry; enzymes for industrial purposes; milk ferments for the food industry; milk ferments for industrial purposes; flocculants; phosphatides; phosphates [fertilisers]; phosphorus; fluorine; chemicals for forestry, except fungicides, herbicides, insecticides and parasiticides; leather-renovating chemicals; oil-separating chemicals; water purifying chemicals; oil-purifying chemicals; stain-preventing chemicals for use on fabrics; leather-waterproofing chemicals; textile-waterproofing chemicals; leather-impregnating chemicals; textile-impregnating chemicals; horticulture chemicals, except fungicides, herbicides, insecticides and parasiticides; agricultural chemicals, except fungicides, weedkillers, herbicides, insecticides and parasiticides; soil conditioning preparations; industrial chemicals; chlorine; chlorates; chlorides; loam; slag [fertilisers]; alkalies; emulsifiers; ethers; esters.

2. International registration No 1 183 480 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods and services.

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 1 183 480 in Class 1. The opposition is based on European trade mark registration No 682 468. The opponent invoked Article 8(1) (b) EUTMR.

On 07/09/2015 the Opposition Division rendered a decision which resulted in the partial refusal of the international registration pursuant to Article 8(1)(b) EUTMR on the grounds that there was likelihood of confusion for some of the contested goods.

The decision was appealed and the Board of Appeal decided in case R 2241/2015-1 on 05/10/2016. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the request for proof of use of the earlier mark, was not considered and should have been taken into account.

PRELIMINARY REMARKS

The notice of opposition was directed against all the goods and services of international registration designating the European Union No 1 183 480. However in its observations of 10/01/2017, the opponent limited the scope of its opposition to the goods in Class 1. Therefore, the Opposition Division will only consider the contested Class 1 in its further examination of the opposition.

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 holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark No 682 468.

The contested application was published on 29/05/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 29/05/2009 to 28/05/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based. They are the following:

Class 1: Chemicals and chemical compositions for use in pulp, paper and paperboard manufacturing systems.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 10/01/2017 the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Enclosure 1a to 1r: copies of 17 invoices issued by the opponent for the product spectrum XD3899 to various customers in France, Italy, Spain, United Kingdom and outside the territory of the European Union. The currency of the invoices are Euros and they are dated between 2010 and 2014.

Enclosure 2: copy of the product brochure for 2011 (this date is provided by the opponent) with information about the product Spectrum XD3899 and its application in pulp, paper and paperboard manufacturing systems.

Enclosure 3: copy of the safety data sheet of 2010/2011 giving detailed information about the product Spectrum XD3899.

Enclosure 4: copy of the presentation ‘successful biocide treatment at a closed loop paper machine system’ given at IMPS 2010 at Munich (Internationales Müncher Papier Symposium 2010), pages 19-32 refer to ‘Spectrum Ammonium Bromide Techology’ and ‘Spectrum XD389 Ammonium Bromide Techology’.

Enclosures 5a to 5e: copies of product labels for products sold under the Spectrum trade mark, undated.

Enclosures 6a to 6m: copies of product data sheets for products sold under the Spectrum mark, undated. These copies provide information on the products sold under the Spectrum mark; in the data sheets reference is made to the EU biocidal products regulation 528/2012 and the recommendations of German BfR ( Bundesinstitut für Risikobewertung).

The invoices filed show that the place of use is the European Union. This can be inferred from the language of the documents (English), the currency mentioned, Euro, and some addresses in France, Spain, United Kingdom and Italy. Therefore, the evidence relates to the relevant territory.

Most of the evidence (invoices) is dated within the relevant period, that is, between 29/05/2009 to 28/05/2014 and demonstrates regular sales during all the relevant years; therefore, the duration and time of use have been proven.

The evidence (which includes product references in the invoices, and leaflets about the products qualities) demonstrates that the mark has been used as registered for the goods for which the mark is registered in Class 1.

The documents filed, namely customer invoices to different customers in Europe, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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 goods

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

Class 1: Chemicals and chemical compositions for use in pulp, paper and paperboard manufacturing systems.

The contested goods are the following:

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

Some of the contested goods in this class, such as caustic soda for industrial purposes, chlorine or starch for industrial purposes, are chemicals used for manufacturing pulp, paper and paperboard and, as such, are identical to the earlier mark’s chemicals and chemical compositions for use in pulp, paper and paperboard manufacturing systems.

The remaining contested goods in this class are all included in the following broad categories: chemicals used in industry (other than those used in the pulp, paper and cardboard manufacturing 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; and paper, plates, film and cloth treated with chemicals. All these goods are considered similar to those of the earlier mark, as they can have the same nature (chemical products), producers (chemical companies, which frequently have a diversified portfolio of chemical products) and distribution channels.

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 all directed at business customers with specific professional knowledge or expertise. The degree of attention will therefore be higher than average.

The signs

SPECTRUM

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 earlier mark is a word mark, ‘SPECTRUM’. It will be understood by a part of the public in the relevant territory (e.g. the Dutch- or English-speaking public) as meaning ‘a band of colours, as seen in a rainbow, produced by separation of the components of light by their different degrees of refraction according to wavelength’ (information extracted from Oxford Dictionaries on 06/07/2017 at https://en.oxforddictionaries.com/definition/spectrum). Another part of the relevant public (e.g. German- or Danish-speaking) will also perceive this meaning, since the spelling is very close to the equivalent word in their language (‘spektrum’). Finally, a part of the public (e.g. Spanish- or Italian-speaking) will not understand this word or assign it any meaning. As it is not descriptive, allusive or otherwise weak for the relevant goods it is distinctive.

The contested sign is figurative and is composed of verbal elements and a fanciful script. The element ‘Spectrum’ of the contested sign has the meaning above explained and is, therefore, distinctive. The words ‘IMPORT EXPORT LIMITED’ being very common and basic English words, are likely to be understood by the majority of the relevant public (even non-English-speakers) as related to an export and import limited company. The figurative device of the contested sign (red circle) has no particular meaning. Finally, the symbol ‘®’ of the contested sign will be understood by the relevant public as indicating that the sign is a registered trade mark.

The element ‘IMPORT EXPORT LIMITED’ of the contested sign will be associated with ‘services provided relating to the importation and exportation of goods’. This element is not distinctive, as it merely indicates a type of company (limited) that purchases or sells goods from another country, an activity that can be carried out for practically any type of goods. The public understands the meaning of the element and will not pay as much attention to this non-distinctive element as to the other, more distinctive, elements of the mark. The element ‘®’ of the contested sign is a non-distinctive element. Consequently, the impact of these and non-distinctive elements is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘SPECTRUM’ in the contested sign is the dominant element as it is the most eye-catching, by virtue of its position and size.

Visually the signs are similar to the extent that they coincide in the word ‘SPECTRUM’. However, they differ in the stylised script, red circle and symbol ® and in the words ‘IMPORT EXPORT LIMITED’ in the contested sign.

Therefore, the signs are similar to an average degree.

Aurally: irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛spectrum’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛IMPORT EXPORT LIMITED’ and also in the sound of the letter in the symbol ® of the contested mark, which is likely not pronounced.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the relevant public which understands the word ‘Spectrum’, both signs have partially the same meaning, and are therefore conceptually similar.

For another part of the public, which do not understand the word ‘Spectrum’ but understands the words ‘Import Export Limited’, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs will be associated with a partially similar meaning, the signs are conceptually similar to a high degree.

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

Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

The goods have been found to be partly identical and partly similar.

The signs are visually similar and aurally highly similar and conceptually highly similar for part of the public. The earlier trade mark is entirely included in the contested sign, where it forms a clearly perceptible separate element. The contested mark has a figurative element of a decorative nature, and non-distinctive additional verbal elements (‘IMPORT EXPORT LIMITED’), as explained above. Consequently, the attention of the relevant public will focus on the most distinctive and dominant element, ‘SPECTRUM’, of the contested sign, which is nearly identical to the earlier mark, except for the stylised script and the figurative circle device in its middle part.

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 (judgment of 14/07/2005, T-312/03, ‘Selenium-Ace’, paragraph 37; decision of 19/12/2011, R 0233/2011-4 – ‘Best Tone’, paragraph 24; decision of 13/12/2011, R 0053/2011-5 – ‘Jumbo’, paragraph 59). It is necessary to take into account that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark that has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein (see judgment of 06/10/2005, C-120/04, ‘Thomson Life’, paragraph 37).

Bearing in mind that the earlier mark is of average distinctiveness, it is considered that the visual and aural differences are not sufficient to counterbalance the strong visual and aural similarities between the signs, even taking into account the relatively high degree of attention of the relevant public for the goods in question.

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 well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested 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

Liliya

YORDANOVA

Patricia

LÓPEZ FERNÁNDEZ

DE CORRES

Robert

MULAC

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.

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