CLEROL | Decision 2764127
Date Published: Sep 24, 2017
OPPOSITION No B 2 764 127
Stockmeier Chemie GmbH & Co. KG, Eckendorfer Str. 10, 33609 Bielefeld, Germany (opponent), represented by Dr. Stohlmann Rechtsanwälte Partnerschaft mbB, Am Bach 11, 33602 Bielefeld, Germany (professional representative)
a g a i n s t
Ouvrie PMC SA, 44 Rue Albert Einstein, 62220 Carvin, France (applicant), represented by Martin Grasset, 86 Boulevard Carnot, 59800 Lille, France (professional representative).
On 29/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 764 127 is upheld for all the contested goods.
2. European Union trade mark application No 15 597 727 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 597 727. The opposition is based on European Union trade mark registration No 11 764 107. 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.
- The goods
The goods on which the opposition is based are the following:
Class 1: Industrial chemicals; chemicals for manufacturing cleaning and disinfectant preparations included in class 1; chemical additives for cleaning and disinfectant preparations included in class 1; surfactants; oil-purifying chemicals, water purifying chemicals.
The contested goods are the following:
Class 1: Chemicals used in industry, science, photography, agriculture, horticulture and forestry; manures (natural and artificial); fire extinguishing compositions; hardening and brazing preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
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.
Chemicals used in industry is identically contained in both the specifications, albeit with slightly different wording (chemicals used in industry versus industrial chemicals).
The contested manures (artificial); fire extinguishing compositions; hardening and brazing preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry are included in the broad category, or overlap with, of the opponent’s industrial chemicals. Therefore, they are identical.
The contested chemicals used in science; photography, agriculture, horticulture and forestry are similar to the opponent’s industrial chemicals, as they have the same nature and can have the same producers.
The contested manures (natural) are organic matter. Manures are mostly derived from animal faeces and can be used as an organic fertilizer in agriculture. A fertilizer is any material natural or synthetic that is applied to the soil or to plant tissues in order to supply nutrients for the better cultivation of plants. These are considered to be similar to the opponent’s industrial chemicals. Indeed, the contested goods are an alternative for synthetic fertilizers, which are chemicals for industry purpose. Moreover, these goods have the same purpose, method of use and target the same consumers.
- 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 directed at business customers with specific professional knowledge or expertise in the field of chemical products. The degree of attention is high, due to the chemical nature and industrial application of the relevant goods (19/11/2014, T-138/13, VISCOTECH, EU:T:2014:973, § 43; 08/07/2010, R 1377/2009-1, Hardex (fig.) / Hydex, § 17-18).
- The signs
CLENOL | CLEROL |
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).
Both the earlier mark and the contested sign are word marks, consisting of a single word element that has no meaning for the public in the relevant territory. Therefore, the distinctiveness of both ‘CLENOL’ and ‘CLEROL’ is average.
Due to the verbal nature of the marks, there are no elements that could be considered more visually dominant than other elements.
Visually and aurally, the signs coincide in the letters/sounds ‘CLE*OL’. However, they differ in their fourth letters/sounds, namely the ‘N’ of the earlier mark and the ‘R’ of the contested sign. This difference is, however, placed in the middle of the signs, surrounded by the same letters/phonemes, placed in the same order. Moreover, the lengths, structures, rhythms and intonations of the signs are also very similar, as they are both formed of a single word of six letters, out of which five coincide, with the same number of syllables. Therefore, the signs are visually and aurally highly similar.
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.
- 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 observations of 15/02/2017, the opponent claimed that the earlier trade mark enjoys enhanced distinctiveness since its mark bears no meaning in relation to the relevant goods. However, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (decision of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). Enhanced distinctiveness requires recognition of the mark by the relevant public, acquired through use or reputation of the mark. This has to be proven by the mark’s proprietor by submitting appropriate evidence. The opponent did not file any evidence in this sense.
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 relevant goods are party identical and partly similar. They target the professional public, whose level of attention is high. The earlier trade mark enjoys a normal degree of distinctiveness.
The signs in dispute are visually and aurally highly similar due to the coincidences in the letters ‘CLE*OL’, present identically and in the same order in both signs. The difference between the signs lies exclusively in their fourth letters, which are, however, in the middle of the marks, where consumers do not tend to focus their attention. In view of the above and considering that the marks coincide in five out of six letters, the mentioned differing element may be overlooked by the relevant public. Moreover, there are no conceptual aspects that can constitute a difference between the marks.
In addition, account must be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Taking into account the abovementioned similarities between the signs in question, the Opposition Division considers that those similarities might lead the relevant public, even with a high degree of attention, to believe that the contested goods and the opponent’s goods came from the same undertaking.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 764 107. It follows 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 applicant 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 | Orsola LAMBERTI | Michele M. BENEDETTI-ALOISI |
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.