OPPOSITION No B 2 622 671

Yacco, société par actions simplifiée, 16-18, rue Henri Sainte Claire Deville, 92500 Rueil-Malmaison, France (opponent), represented by Fieldfisher (France) LLP, 21 boulevard de la Madeleine, 75001 Paris, France (professional representative)

a g a i n s t

Pan Lubricants S.A., Ricardo J. Alfaro Avenue, The Century Tower, Suite 713,  Panama City, Panama (holder), represented by Von Füner, Ebbinghaus, Finck, Hano, Mariahilfplatz 3, 81541 Munich, Germany (professional representative).

On 03/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 622 671 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 249 972. The opposition is based on European Union trade mark registration No 2 587 764. 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 and science, as well as in agriculture, horticulture, forestry and aquaculture; petrochemical and oil products and derivatives thereof; hydrocarbons and derivatives thereof resulting from refining and transformation of oil and gas; unprocessed plastics in any form; rubber in liquid form; chemicals derived from fatty substances, fatty acids; fatty alcohols and industrial derivatives thereof; detergents for industrial use; chemical additives for motor fuel, lubricants and fuel; solvent materials, anti-freeze; fluids for hydraulic and transmission circuits; brake liquids; substances for absorbing petroleum, oils and greases, oil dispersants; artificial synthetic resins; polymers for use in industry; unprocessed plastics in powder, liquid or paste form; adhesives (glues) used in industry; chemicals for the manufacture of motor vehicle engine seals; rinsing fluids for hydraulic circuits; coolants; grease removers for brakes; defrosters for windows, locks or any other frozen mechanism; anti-freeze; waterproofing preparations.

Class 3        Bleaching, cleaning, washing, polishing, scouring and abrasive preparations for the maintenance of vehicles and machines; oils for cleaning purposes for the maintenance of vehicles and machines; fabric shampoos for the maintenance of vehicles and machines; none of the said goods to be used for shoes or related goods.

Class 4        Industrial oils and greases; lubricants; fuels (including motor spirit) and illuminants; fatty substances, oils, nonedible greases, petroleums, petrols, fuels and other liquid, solid and gaseous combustibles; kerosene and distilled petroleum products; lubricants of all kinds, for chains of motorcycles, scooters, outboard motors, and agricultural machinery engines; petroleum (crude or refined), petroleum derivatives and petroleum-based preparations; paraffin and waxes; lighting fuel; additives, non-chemical, to motor-fuel; smokeless oils; carburetter and injector cleaners; engine additives; radiator sealers.

The contested goods are the following:

Class 1        Propellant gases for aerosols; engine-decarbonising chemicals; acidulated water for recharging accumulators; baths for galvanizing; brake fluid; anti-knock substances for internal combustion engines; coolants for vehicle engines; anti-boil preparations for engine coolants; detergents for use in manufacturing processes; petroleum dispersants; chemical additives for oils; detergent additives to gasoline [petrol]; chemical additives to motor fuel; opacifiers for enamel; chemical preparations, except pigments, for the manufacture of enamel; emulsifiers; tree cavity fillers [forestry]; degreasing preparations for use in manufacturing processes; catalysts; gums [adhesives], other than for stationery or household purposes; cement for footwear; cement for mending broken articles; leather glues; adhesives for wall tiles; mastic for tires [tyres]; adhesives for paperhanging; adhesives for industrial purposes; glue for industrial purposes; flocculants; silicones; fillers for automobile bodies; compositions for repairing tires [tyres]; foundry molding [moulding] preparations; compositions for threading; oil dispersants; oil-bleaching chemicals; oil-separating chemicals; oil-purifying chemicals; oils for tanning leather; oils for currying leather; oils for the preservation of food; oils for preparing leather in the course of manufacture; synthetic materials for absorbing oil; oil cement [putty]; fuel-saving preparations; plastisols; plasticizers; dispersions of plastics; plastics, unprocessed; surface-active chemical agents; anti-frothing solutions for accumulators; radiator flushing chemicals; power steering fluid; fluids for hydraulic circuits; auxiliary fluids for use with abrasives; transmission fluid; drilling muds; solvents for varnishes; chemicals for the manufacture of paints; chemicals for the manufacture of pigments; chemical intensifiers for rubber; refrigerants; finishing preparations for use in the manufacture of steel.

Class 2        Asbestos paints; fixatives for watercolors [watercolours]; alizarine dyes; aluminium powder for painting; aluminium paints; aniline dyes; black Japan; auramine; bactericidal paints; canada balsam; dyes; colorants; wood stains; colorants for butter; coloring [colouring] wood; white lead; coatings for roofing felt [paints]; bitumen varnish; bronze powder [paint]; bronzing lacquers; lime wash; shoe dyes; fireproof paints; litharge; primers; undersealing for chassis of vehicles; dyewood extracts; oils for the preservation of wood; wood coatings [paints]; wood preservatives; wood mordants; titanium dioxide [pigment]; printing compositions [ink]; printing ink; enamels for painting; enamels [varnishes]; silver emulsions [pigments]; protective preparations for metals; thickeners for paints; colophony; carbonyl [wood preservative]; ceramic paints; binding preparations for paints; badigeon; cobalt oxide [colorant]; creosote for wood preservation; lacquers; thinners for lacquers; colorants for liqueurs; mastic [natural resin]; anti-rust greases; zinc oxide [pigment]; anti-rust oils; silver paste; pigments; coatings [paints]; glazes [paints, lacquers]; varnishes; aluminium powder for painting; silvering powders; metals in powder form for painters; decorators, printers and artists; anti-fouling paints; anti-rust preparations for preservation; anti-corrosive preparations; anti-tarnishing preparations for metals; mordants; thinners for paints; whitewash; red lead; siccatives [drying agents] for paints; anti-corrosive bands; distempers; paints; marking ink for animals; fixatives [varnishes]; metal foil for painters, decorators, printers and artists; silver foil [leaf].

Class 3        Abrasives; abrasive cloth; glass cloth; abrasive paper; diamantine [abrasive]; alum stones [astringents]; antistatic preparations for household purposes; color- [colour-] brightening chemicals for household purposes [laundry]; preparations to make shiny the leaves of plants; laundry glaze; shining preparations [polish]; bleaching soda; tailors' wax; polishing wax; cobblers' wax; windscreen cleaning liquids; cloths impregnated with a detergent for cleaning; preparations for soaking laundry; color-removing preparations; degreasers other than for use in manufacturing processes; scale removing preparations for household purposes; rust removing preparations; silicon carbide [abrasive]; carbides of metal [abrasives]; corundum [abrasive]; parquet floor wax; non-slipping wax for floors; washing soda, for cleaning; detergents other than for use in manufacturing operations and for medical purposes; soap for brightening textile; oils for cleaning purposes; oil of turpentine for degreasing; non-slipping liquids for floors; floor wax removers [scouring preparations]; stain removers; varnish-removing preparations; laundry bleaching preparations; laundry preparations; starch for laundry purposes; dry-cleaning preparations; turpentine, for degreasing; soda lye; canned pressurized air for cleaning and dusting purposes; preparations for unblocking drain pipes.

Class 4        Anthracite; perfumed candles; beeswax; benzene; benzine; benzol; wood briquettes; combustible briquettes; lignite; petroleum jelly for industrial purposes; grease for shoes; wax [raw material]; industrial wax; wool grease; producer gas; gas for lighting; solidified gas [fuel]; diesel oil; gasoline; kerosene; lubricating graphite; lamp wicks; wicks for candles; methylated spirit; wood spills for lighting; charcoal [fuel]; additives, non-chemical, to motor-fuel; firewood; electrical energy; petroleum ether; grease for leather; illuminating grease; tallow; preservatives for leather [oils and greases]; oil for the preservation of masonry; grease for arms [weapons]; moistening oil; coal; coal naphtha; coal tar oil; coal dust [fuel]; coal briquettes; carnauba wax; castor oil for technical purposes; bone oil for industrial purposes; coke; xylene; xylol; ligroin; mazut; grease for belts; lubricating grease; lubricants; lubricating oil; cutting fluids; mineral fuel; carburants; motor fuel; motor oil; naphtha; petroleum, raw or refined; oil-gas; nightlights [candles]; ozocerite [ozokerite]; oleine; oils for releasing form work [building]; oil for the preservation of leather; oils for paints; fuel gas; vaporized fuel mixtures; fuel; fuel with an alcoholic base; paper spills for lighting; paraffin; belting wax; non-slipping preparations for belts; dust laying compositions; dust removing preparations; dust binding compositions for sweeping; fish oil, not edible; rape oil for industrial purposes; firelighters; lighting fuel; illuminating wax; candles; Christmas tree candles; soya bean oil preparations for non-stick treatment of cooking utensils; sunflower oil for industrial purposes; alcohol [fuel]; stearine; textile oil; industrial grease; industrial oil; peat [fuel]; peat briquettes [fuel]; ceresine.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large as well as business customers. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

YACCO
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 consisting of the letters ‘YACCO’. The sign has no meaning for the public in the relevant territory. Therefore, it has no elements that could be considered clearly more distinctive than other elements and, as a whole, must be seen as being of a normal distinctiveness for all the goods concerned. Finally, being a word mark, the sign has no elements that could be considered more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark consisting of the letters ‘YUKO’ depicted in white on a black background. The verbal element ‘YUKO’ has no meaning for the public in the relevant territory and has a normal degree of distinctiveness. Above the letter ‘O’ there is a chequered rectangular-shaped figurative element, which performs a purely decorative function and is considered less distinctive than the abovementioned verbal element. The contested sign has no element that could be considered more dominant (visually eye-catching) than other elements.

Indeed, conceptually, neither of the two signs has a meaning for the public in the relevant territory. Therefore, in the absence of any meaningful elements, the conceptual comparison does not influence the assessment of similarity of the marks.

Visually, the signs coincide in their first and last letters, ‘Y’ and ‘O’, respectively. However, they differ in their middle letters, namely the second, third and fourth letters ‘-ACC-’ in the earlier trade mark and the second and third letters ‘-UK-’ in the word ‘YUKO’ in the contested sign. In addition, the signs differ in the stylisation and the figurative element of the contested sign.

The length of the signs may influence the effect of the differences between them. In the present case, the signs are considered relatively short, because they consist of four and five letters. The shorter the sign, the more easily the public is able to perceive all of its single elements. Therefore, in relatively short words small differences may frequently lead to a different overall impression. In the present case, the differing middle letters, ‘-ACC-’ versus ‘-UK-’ are rather striking visually.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the signs coincide in the sound of the first letter ‘Y’ and the ultimate letter ‘O’. In addition, in a part of the relevant territory, for example in a German-speaking part the signs also coincide in the sound of their middle letters, i.e. the third and fourth letters ‘CC’ in the earlier mark and the third letter ‘K’ in the contested sign.

Therefore, the signs are, at most, aurally 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.

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.

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).

In the present case, the contested goods were assumed to be identical to the opponent’s goods.

The similarities between the signs are limited to two letters, ‘Y’ and ‘O’, contained in both marks as their first and last letters, which lead to a certain degree of visual and aural similarity between them. Nonetheless, the signs have obvious differences that outweigh this similarity.

It is acknowledged, as argued by the opponent, that one of the coinciding letters ‘Y’ is placed at the beginning of both marks; however, although consumers generally tend to focus on the first element of a sign when encountering a trade mark, this argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity between the marks must take account of the overall impression created by them.

From a visual and in a part of the relevant territory from an aural perspective, the signs have different middle letters/sounds, ‘-ACC-’ versus ‘-UK-’, which are considerable distance apart and contribute to creating a different overall impression and safely differentiate between the marks. Moreover, those differences are of great importance, because the signs are relatively short.

Aurally, in a part of the relevant territory, for example in the German-speaking part, the signs are admittedly more similar, and the Opposition Division notes that aural similarities can be given more weight if the goods are traditionally ordered verbally, in which case the aural perception of the sign could also be influenced by factors such as the presence of various other sounds perceived by the addressee at the same time. However, in the present case, the opponent has not claimed or proved that in relation to the goods in question, the aural aspect of the comparison of the signs should be given more importance than the visual aspect.

The conceptual comparison does not influence the assessment of similarity of the marks.

Taking into consideration all the facts set out above, as well as the fact that the opponent has not claimed or proved any enhanced distinctiveness for his earlier mark and that when taking into account the goods at stake, the aural comparison cannot be given any heightened importance, the Opposition Division finds that the relevant public is not likely to believe that the earlier mark and the contested sign, even if applied to identical goods, originate from the same undertaking or economically-linked undertakings. As a result, there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, 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.

Since the opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Julia TESCH

Sandra KASPERIŪNAITĖ

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.

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.