ARSALLIS | Decision 2763756

Date Published: Sep 25, 2017

OPPOSITION No B 2 763 756

BP p.l.c., 1 St James’s Square, London SW1Y 4PD, United Kingdom (opponent), represented by BP Group Trade Marks, 20 Canada Square, Canary Wharf, London E14 5NJ, United Kingdom (employee representative)

a g a i n s t

Αριστειδησ Τσιαντοσ, Πατριαρχου Ιωακειμ 18 Βασ Παυλου 73, 16673 Voula, Greece (applicant).

On 13/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 763 756 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 341 936. The opposition is based on European Union trade mark registration No 1 619 659. The opponent invoked Article 8(1)(b) and 8(5) 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 and services

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

Class 1:	Chemicals for use in industry and science; chemical products for use in industry and/or for use in manufacturing processes; artificial and synthetic resins; moulding compounds; polymers for use in industry; plastics for industrial use; preparations, fluids and oils for machining and/or metal working operations; coolants; solvents; hydraulic fluid; transmission fluid; brake fluid; anti-freezing and de-icing preparations.
Class 2:	Anti-corrosive preparations and substances; agglutinants for paints, cements, putty; paints, varnishes and lacquers; coatings and sealants; preservatives against rust; resins; thickeners and thinners all for paints, varnishes or lacquers.
Class 3:	Paint, lacquer and varnish removing compositions; detergents and de-greasing liquids and preparations (none being for use in industrial and manufacturing processes or for medical purposes); bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; shampoos; perfumery; essential oils; cosmetics; hair lotions; dentifrices; toothpaste; shoe polish; windscreen cleaning preparations; waxes; petroleum jelly (for cosmetic purposes).
Class 4:	Industrial oils and greases; dust absorbing, wetting and binding compositions; fuels; illuminants; non-chemical additives for oils and fuels; lubricants; lubricating greases; cutting oils; engine oils; gear oils; hydraulic oils; waxes; petroleum jelly for industrial purposes.
Class 5:	Disinfectants; preparations for killing weeds and destroying vermin; insecticides; bandages; mordants for seeds; detergents for medical purposes; greases and petroleum jelly for medical or veterinary purposes.
Class 6	Aluminium; containers of metal for chemicals, compressed gases and liquids; metal pipes; metal valves not being parts of machines; keyrings; array frames for light collecting panels.
Class 7:	Pumps; compressors; condensers; condensing installations; generators; drilling machines and drilling rigs.
Class 9:	Surveying, electric, optical, photographic, teaching, life-saving and measuring apparatus and instruments; batteries; cathodic anti-corrosion apparatus; circuit breakers and circuit closers; apparatus for recording, transmission or reproductions of sounds or images; magnetic and optical recording disks; protective gloves; wet suits for diving; protective helmets; magnetic identity cards; encoded cards for storage of data; authorization cards; charge cards and personal identification cards; photovoltaic cells and modules; solar electric systems; solar electric installations; silicon wafers; pre-recorded records, tapes and videos; computer programmes; mats for use with computers; sun glasses; magnetic tapes; neon signs.
Class 11:	Installations and apparatus for lighting, heating, cooking, refrigerating, drying, ventilating, air conditioning, water supply, sanitary purposes, gas separation, gas storage, waste destruction or disposal; electric bulbs, lamps and discharge tubes; heat pumps; anti-dazzle devices for motor vehicles; air freshening apparatus for motor vehicles and boats.
Class 12:	Apparatus for locomotion by land; wheels, tyres, hoses, mirrors, seats and seat covers, steering wheels, horns, windscreen wipers, snow chains, ski carriers, all the aforesaid goods being for land vehicles; sun blinds for motor vehicles.
Class 14:	Jewellery; horological and chronometric instruments; ashtrays and badges all of precious metal or plated therewith; cuff links; earrings; medals; tie clips; tie pins.
Class 16:	Printed matter; photographs; stationery; adhesives and adhesive tape for stationery or household use; instructional and teaching material (except apparatus); plastic and paper materials for packaging; playing cards; magazines (periodicals); plastic substitutes for paper and cardboard; paint brushes and artists materials; cards, credit cards, charge cards, debit cards, personal identification cards; advertising signs.
Class 17:	Packing and insulating material; non-metallic hoses and pipes; insulating oils; semi-processed plastics products; plastics film other than for wrapping; fibres of plastic not for textile use; carbon fibres not for textile use; carbon fibre reinforced plastics; carbon fibre reinforced resins.
Class 18:	Leather and imitation leather and goods made thereof not included in other classes; bags; purses, wallets, briefcases, suitcases and holdalls; umbrellas, parasols and walking sticks.
Class 19:	Building materials not of metal; non-metallic rigid pipes for building; asphalt, pitch, bitumen; materials for making and coating roads; prefabricated platforms and booms; geotextiles (non-metallic).
Class 20:	Containers, not of metal, for transport or storage, packaging containers of plastic.
Class 21:	Containers, not made from metal, for household and kitchen purposes; articles of glass, porcelain or earthenware not included in other classes.
Class 22:	Rope, twine, nets, tents, tarpaulins, sails, sacks; geotextile containers and bags made of textile.
Class 23:	Yarn and thread for textile purposes.
Class 24:	Fabric and textile goods; blankets and table linen; handkerchiefs; filter fibres; non-woven fabrics and felts; place mats of textile material.
Class 25:	Clothing, footwear, headgear.
Class 27:	Carpets, doormats, rugs, linoleum and other floor coverings; wall-hangings (non-textile).
Class 28:	Games and playthings; gymnastic and sporting goods, not included in other classes; Christmas tree decorations; ski wax.
Class 29:	Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.
Class 30:	Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Class 31:	Agricultural and horticultural products not included in other classes; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals and birds; Christmas trees.
Class 32:	Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 33:	Alcoholic beverages (except beers).
Class 34:	Tobacco; cigars; cigarettes; smokers’ articles; matches.
Class 35:	Accounting; advertising; dissemination of advertising matter; business administration and management; business information; compilation of information into computer databases; statistical information; placement of advertising including advertising and promotions on the Internet; provision of information for business purposes on the Internet; management of customer loyalty, incentive or promotional schemes; convenience store services; organising of competitions; office functions.
Class 36:	Accident insurance underwriting; capital investments; charitable fund raising; credit and debit card services; financial sponsorship; issuance of credit and debit cards; issue of tokens of value; retirement payment services; pension fund administration and management; financing services; financial management and consultancy.
Class 37:	Construction, repair and maintenance of buildings and other structures including subterranean and submarine structures and supervision thereof; repair, maintenance and servicing of vehicles, vehicle service stations and vehicle fuelling station services; electric appliance installation and repair; freezing equipment installation and repair; heating equipment installation and repair.
Class 39:	Boat storage; boat transport; vehicle rental; vehicle parking; distribution of energy; marine transport; transport by pipeline; refuelling services; vehicle refuelling station services; fuelling of ships, boats, aircraft and land vehicles; storage of goods; delivery of goods; packaging of goods.
Class 40:	Recycling of plastics; material processing services for liquids and gases; generation of gas and electricity; treatment, disposal and destruction of waste.
Class 41:	Education and training services in the fields of science, technology, health, safety and environment; publication of books and magazines; organisation of competitions; dissemination of information for educational and recreational purposes via the Internet; mentoring services.
Class 42:	Providing of food and drink; providing of temporary accommodation; rental of meeting rooms; self service restaurants; take-away food services; snack bars; hygienic care; public baths and showers; legal services; industrial design; industrial engineering; preparation of engineering drawing and technical reports; scientific and industrial research; computer programming; marine, aerial and land surveying; intellectual property consultancy; licensing of intellectual property; security consultancy; material testing; procurement of goods; bringing into service new industrial plant.

The contested goods and services are the following:

Class 3:	Essential oils and aromatic extracts; essential oils for aromatherapy use; essential oils; aromatherapy oil; oils for perfumes and scents; cosmetics; perfumery and fragrances; body cleaning and beauty care preparations; fragrances; eau de parfum; toilet water; make-up; beauty milk; hair preparations and treatments; skin care preparations; household fragrances; scented wood; fragrance emitting wicks for room fragrance.
Class 4:	Fuels and illuminants; candles and wicks for lighting; perfumed candles; aromatherapy fragrance candles; tealights.
Class 14:	Jewellery; women’s jewelry; ornamental pins; decorative pins [jewellery]; rings [jewellery, jewelry (Am.)]; bracelets; jewellery made of precious metals; cuff links; earrings; key rings [trinkets or fobs]; leather key fobs.
Class 18:	Luggage, bags, wallets and other carriers; gentlemen’s handbags; purses made of precious metal; purses, not of precious metal; ladies’ handbags; clutch bags; handbags made of imitations leather; leather purses; leather and imitation leather; garment carriers.
Class 25:	Clothing; sleeveless jerseys; neckties; leather belts [clothing]; shoulder scarves; belts [clothing]; paper hats [clothing]; collar protectors; short-sleeved or long-sleeved t-shirts; neck scarves; undershirts; foulards [clothing articles]; cravats; hats.
Class 35:	Commercial trading and consumer information services; online retail store services relating to cosmetic and beauty products; online retail store services relating to clothing; retail services connected with the sale of clothing and clothing accessories; retail services in relation to jewellery; wholesale services in relation to bags; wholesale services in relation to fragrancing preparations; retail store services in the field of clothing; retail services in relation to bags; retail services in relation to clothing; wholesale services in relation to jewellery; wholesale services in relation to toiletries; wholesale services in relation to footwear; retail services in relation to toiletries.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services 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, some of the goods and services assumed to be identical are directed at the public at large and some are directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication and/or specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

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 figurative and consists of a radial geometric pattern, made up of 18 partially overlapping geometric forms in solid black with the borders depicted using thin white lines.

The contested mark is also figurative and consists of a figurative device with a radial geometric pattern, made up of 18 partially overlapping geometric forms in solid black with the borders depicted using thick white lines. Inside the figurative device there is a verbal element of two letters ‘A’, which are mirror images of each other. Under the figurative device there is another verbal element, namely the word ‘ARSALLIS’. The verbal elements are depicted using a slightly stylised black upper case font.

The verbal elements ‘AA’ and ‘ARSALLIS’ of the contested sign have no meaning for the relevant public and are distinctive. The figurative elements in both signs will be perceived as geometric forms with no particular meaning.

Therefore, neither of the signs has any element that is more distinctive than the other elements.

Neither of the signs has any element that is more dominant (visually eye-catching) than the other elements.

Visually, both the signs contain a figurative device of a radial geometric pattern with the same structure. However, the signs differ in the lines that separate the overlapping geometric forms, and in the two verbal elements present only in the contested sign, namely the two letters ‘A’ in the centre and the word ‘ARSALLIS’.

In the present case, it is important to consider that 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 signs are visually similar to a low degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the earlier mark is purely figurative, it is not possible to compare it aurally with the contested sign.

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

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness and reputation in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• SL1: press cuttings from July-August 2000 relating to the launch of the opponent’s new corporate image. The press cuttings do not display the earlier mark used as the basis for the current opposition, ; instead, they display another figurative sign that is composed of a figurative device similar to the earlier mark, , always depicted in green and yellow and, in practically all the items of evidence, accompanied by the verbal element ‘BP’.

• SL2: an excerpt from the opponent’s 2015 annual report. This document does not display the earlier mark used as the basis for the current opposition.

• SL3: an illustration of the earlier mark used as the basis for the current opposition, , and of another figurative sign similar to the earlier mark,, but in yellow and green.

• SL4: several photos showing the use of the logo by the company in different situations. In all cases, The evidence shows, at best, a single-colour version of the earlier mark, but always accompanied by the verbal element ‘BP’.

• SL5: several photos and a catalogue of merchandising items showing the use of the logo. In most cases, with the exception of a set of cufflinks and a dispatch bag, the evidence again shows a colour version of the earlier mark, generally accompanied by the verbal element ‘BP’.

• SL6: advertisements dated 2011, 2012 and 2016 in which the earlier mark is shown; in all cases, the earlier mark is accompanied by the verbal element ‘BP’.

• SL7: specialist press articles and a ranking of the mark’s recognition, relating to 2015, from Brand Finance and BrandZ; the earlier mark is always shown in green and yellow and accompanied by the verbal element ‘BP’.

• SL8 and SL11: press articles dating from 2011, 2012 and 2016 from The Guardian and from 2017 from Telegraph Media Group Limited, in which the earlier mark is always accompanied by the verbal element ‘BP’.

• SL9-10: till receipts dating from 2010, fuel cards and a sample of packaging for a car oil bottle on which the earlier mark is always accompanied by the verbal element ‘BP’ and, in general, is depicted using the corporate colours, green and yellow.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired reputation or a high degree of distinctiveness through its use.

The evidence listed above shows a sign that is different from the registered European Union trade mark used as the basis for the current opposition, as depicted above. The registered earlier mark consists of only one figurative element, while almost all the evidence relates to a complex figurative sign that contains a figurative device that is similar or identical to the only element of the earlier mark, but which is always accompanied by the distinctive verbal element ‘BP’ and is also in general depicted in the corporate colours, green and yellow.

Therefore, there is not enough evidence to prove that the earlier figurative sign –being only a part or similar to a part of the sign that appears in the evidence – enjoys on its own enhanced distinctiveness and a reputation in the relevant territory. The documents do not show the market share held by this trade mark, the intensity or duration of its use or the size of the investment made by the undertaking in promoting it. With this in mind, the Opposition Division concludes that the evidence filed by the opponent does not show that consumers have become accustomed to seeing the figurative device alone, without any colour, as a company identifier of the opponent. Therefore, the level of knowledge and recognition of the public in relation to the opponent’s figurative mark cannot be established. The reputation of a trade mark cannot be determined in the abstract, but must necessarily be linked to the perception of the relevant consumers. It follows that even if long standing use and reputation were proven for the sign composed of the verbal and figurative elements, this reputation would not automatically extend to the opponent’s figurative mark when viewed in isolation. Considering the above, there is not sufficient evidence relating to the earlier mark as registered, and its reputation and enhanced distinctiveness are therefore not proven.

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.

5. Global assessment, other arguments and conclusion

The goods and services were assumed to be identical and they target both the general public and a specialist public. The degree of attention may vary from average to high.

Similarity between the signs has been established only on a visual level. It concerns exclusively an element that has a limited impact on the consumer’s perception of the overall impression given by the signs, as, in the case of the contested sign, the public will refer to it by its verbal elements rather than by describing its figurative elements. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public because there are two clearly perceptible additional verbal elements in the contested sign that are sufficient to exclude a likelihood of confusion.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

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REPUTATION – ARTICLE 8(5) EUTMR

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 will 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.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As previously mentioned, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark enjoys a reputation, as it does not show that the figurative trade mark as registered is known by a significant part of the relevant 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Ana MUÑIZ RODRIGUEZ

Fabián GARCIA QUINTO

Zuzanna STOJKOWICZ

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.