ELECTROLUBE | Decision 2314147 - PROLUTEC, S.A. v. H K Wentworth Limited

Date Published: Sep 25, 2017

OPPOSITION No B 2 314 147

Prolutec, S.A., Calle Barcelona, 411 - Nave 25, 08620 Sant Vicenç dels Horts (Barcelona), Spain (opponent), represented by Durán Cuevas S.L.P., P° de Gracia, 110, 1°, 1ª, 08008 Barcelona, Spain (professional representative)

a g a i n s t

H K Wentworth Limited, Ashby Business Park, Coalfield Way, Ashby-De-La-Zouch, Leicestershire LE65 1JR, United Kingdom (applicant), represented by Marks & Clerk LLP, Alpha Tower, Suffolk Street, Queensway, Birmingham B1 1TT, United Kingdom (professional representative).

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

DECISION:

1.        Opposition No B 2 314 147 is partially upheld, namely for the following contested goods:

Class 2:     Preservatives against rust; anti-rust greases, oils and preparations; anti-tarnishing preparations for metals; protective preparations for metals; preparations for preventing corrosion or tarnishing of metal.

2.        European Union trade mark application No 11 996 519 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 996 519, namely against all the goods in Classes 1, 2, 3 and 4.

The opposition is based on Spanish trade mark registrations No 1 585 387, No 1 939 638, No 1 939 639, No 1 939 640 and No 1 939 642. The opponent invoked Article 8(1)(b) EUTMR.

On 25/11/2015, the Opposition Division rendered a decision that resulted in the partial refusal of the trade mark application for the contested goods in Classes 1, 2 and 3 and stated that the application could proceed for the goods for which registration was sought in Class 4.

The decision was appealed and the Board of Appeal decided in case R 149/2016-1 on 09/01/2017. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the opponent had not established proof of use of the earlier marks with regard to the following goods:

Class 1 – Solvents and adhesives used in industry; chemical products for industrial use;

Class 3 – Polishing preparations.

The Board annulled the Opposition Division’s finding of a likelihood of confusion with regard to the contested goods in Classes 1 and 2, as the Opposition Division had compared the contested goods in Classes 1 and 2 only with the opponent’s ‘chemical products for industrial use’ in Class 1, for which no proof of use was shown.

The Board annulled the contested decision also with regard to the contested goods in Class 3.

PROOF OF USE

The Opposition Division finds it appropriate to re-examine the proof of use in relation to the opponent’s Spanish trade mark registrations No 1 585 387, No 1 939 638, No 1 939 639, No 1 939 642 and No 1 939 640 in accordance with the indications given by the Board of Appeal.

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 applicant requested that the opponent submit proof of use of all the earlier Spanish trade marks.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 11/11/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 11/11/2008 to 10/11/2013 inclusive. Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Spanish trade mark No 1 585 387

Class 3: Cleaning, polishing and grease-removing preparations.

Spanish trade mark No 1 939 638

Class 1: Chemicals products for industrial use; unprocessed artificial resin; tempering and soldering preparations for metals; adhesives used in industry; solvents; scourers.

Spanish trade mark No 1 939 639

Class 2: Colours, varnishes, lacquers; preservatives against rust and the deterioration of wood; dyes material; mordants; raw natural resins; metals in foil and powder form for painters.

Spanish trade mark No 1 939 640

Class 4: Industrial oils and greases; lubricants; fuels (including motor spirit).

Spanish trade mark No1 939 642

Class 39: Distribution services of chemicals used in industry, solvents, scourers, paints, varnishes, lacquers, lubricants, industrial oils and greases; distribution of fuels, distribution of resins.

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 20/10/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/12/2014 to submit evidence of use of the earlier trade marks. This time limit was extended and, on 19/02/2015, within the time limit, the opponent submitted evidence of use.

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.

The evidence to be taken into account is the following:

Annexes 1, 3, 5, 16, 17, 18 and 20: invoices issued by the opponent to Spanish clients for the sale of, inter alia, varnishes, inks, chemical products such as catalysing products and polyol, adhesive varnishes, lacquers, detergents, degreasers, neutralisers such as those suitable for removing traces of iron and chlorine, softener for clothes, lubricants, oils, greases and cogeneration supplied by fuel in Spain between 2008 and 2013.

The invoices are in Spanish; the opponent provided the applicant and the Office with a translation of the products into English in the legal brief attached to the proof of use submitted. The earlier figurative mark ‘EURO LUBE’ appears at the top of these invoices.

Annex 9: a printout from the website www.eurolube.es. The trade mark ‘EUROLUBE’ appears as both a figurative and a word mark in the printout.

Annex 12: an invoice relating to the printing of 200 ‘EUROLUBE’ business cards.

Annex 15: an undated brochure for the products sold by the opponent. The brochure contains a timeline showing the history of the company and the distribution agreements signed. The trade mark ‘EUROLUBE’ appears as a word mark in the brochure.

Annex 23: a statement signed by the manager of Prolutec S.A., giving the annual sales corresponding to transactions in Spain for goods in Classes 1, 2, 3 and 4 and bearing trade marks No 1 585 387, No 1 939 638, No 1 939 639 and No 1 939 640.

Annex 24: a statement signed by Mrs Clara Heredia Hernandez, the purchase orders manager of Prolutec S.A., declaring that the labels submitted are samples of the labels affixed to the products in Classes 1, 2, 3 and 4, bearing the trade marks No 1 585 387, No 1 939 638, No 1 939 639 and No 1 939 640 and sold in Spain between 2008 and 2013.

Annex 25: a statement signed by a Spanish client of Prolutec S.A. declaring that this client bought solvents and paint strippers in Class 1 from Prolutec S.A. that bore trade mark No 1 939 638 in 2012 and 2013.

Annex 26: a statement signed by a Spanish client of Prolutec S.A. declaring that this client bought paints and coatings in Class 2 from Prolutec S.A. that bore trade mark No 1 939 639 in 2009 and 2011.

Annex 27: a statement signed by the owner of a Spanish client of Prolutec S.A. declaring that this client bought lubricants in Class 4 from Prolutec S.A. that bore trade mark No 1 939 640 in 2011 and 2012.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). The Opposition Division notes that the opponent provided the applicant and the Office with a translation into English of most of the products advertised and sold in Spain in the legal brief attached to the proof of use submitted.

Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely invoices, labels and brochures, the Opposition Division considers that there is no need to request a translation.

With regard to the statements submitted as Annexes 23, 24, 25, 26 and 27, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices (Annexes 1, 3, 5, 16, 17, 18 and 20) and the statements signed by some of the opponent’s clients (Annexes 25, 26 and 27) show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and all the Spanish addresses in the invoices. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. The invoices issued by the opponent and the labels affixed to the products sold by the opponent are dated between 2008 and 2013 (Annexes 1, 3, 5, 16, 17, 18 and 20).

The documents filed, namely the invoices (Annexes 1, 3, 5, 16, 17, 18 and 20) and the statement signed by the manager of Prolutec S.A. giving the annual sales corresponding to transactions in Spain (Annex 23), provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

However, the evidence demonstrates that the marks have been used as registered for only some of the goods and services for which they are registered.

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; 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territory.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence demonstrates genuine use of the trade marks for only some of the goods and services for which they are registered, as outlined below.

Spanish trade mark No 1 585 387 for the word mark ‘EUROLUBE’

The invoices (Annexes 3, 5, 7, 16 and 18), the sample labels (Annex 4) and the product sheets (Annex 19) submitted by the opponent prove genuine use in Spain during the relevant time frame of cleaning preparations in Class 3.

The opponent submitted evidence of sales for a wide variety of different cleaning preparations, such as ‘floor cleaner, (paint) gun cleaner, washing-up liquid, cleansing gel for the skin, ammoniac cleaner for surfaces, detergent for clothes, decalcifying agents, universal cleaner, softeners for clothes’. These goods are used to clean many different objects (including human beings).

The invoices (Annexes 5, 7 and 20), the sample labels (Annex 4) and the product sheets (Annex 19) submitted by the opponent also establish genuine use of grease-removing preparations in Class 3.

The opponent submitted evidence of sales of ‘degreasing cleaner for kitchen use, non-toxic degreaser and specific cleaner for grease traps in pipes’ in Spain during the relevant time frame. There is no sub-category that covers all of these different products.

However, the opponent has not provided any evidence of genuine use of the earlier mark with regard to polishing preparations in Class 3. In the evidence, there are no products that are explicitly referred to as ‘polishing preparations/polishing agents’. Moreover, the opponent has not explained which of the listed products, although not expressly referred to as ‘polishing preparations/polishing agents’, may still fulfil such a function.

In view of the foregoing, there is proof of genuine use of this earlier mark for cleaning preparations and grease-removing preparations in Class 3.

Spanish trade mark No 1 939 638 for the figurative mark 

The opponent submitted invoices (Annexes 1 and 16), labels (Annex 2) and a brochure (Annex 15) in relation to this mark.

There is only one invoice, submitted in Annex 16, that refers to solvents (‘Disolvente’, DOGUSOL DP-D 3015). The invoice shows a sales amount of EUR 40, which is not sufficient to prove genuine use. The statement by a Spanish client of the opponent declaring that this client bought solvents and paint strippers in 2012 and 2013 does not change this conclusion, since the statement does not note how much of the total amount was spent on ‘solvents’ and how much was spent on ‘paint strippers’. Moreover, as the invoice submitted in Annex 16 contains several references to ‘paint strippers’ and ‘scouring solutions’, but only one reference to ‘solvents’, it seems likely that the Spanish client bought mainly ‘paint strippers’ and ‘scouring solutions’ and not ‘solvents’. Moreover, the opponent did not submit any sample labels or product sheets for ‘solvents’.

For the same reasons, there is also not sufficient evidence with regard to ‘adhesives used in industry’. Only one invoice (submitted in Annex 16) contains a product bearing an explicit reference to adhesives in its name, namely ‘Aglutinante de Uralita’ (QDOGULON PW-6085/VERDE) for the amount of EUR 285. The opponent has not explained which of the products listed in the invoices, although not expressly referred to as ‘adhesives’, may still fulfil such a function.

As regards ‘chemical products for industrial use’, this is a very wide category of products. The opponent claims to have proven genuine use for the whole category by filing evidence that the earlier mark was used in connection with ‘polyol’, ‘catalysing products’, ‘defoamers’, ‘chemicals for scouring’ and ‘chlorine for swimming pools’.

The ‘scouring preparations’ and ‘paint strippers’ sold by the opponent are cleaning preparations. There is some evidence for ‘chlorine for swimming pools’. The opponent has not explained how ‘chlorine for swimming pools’ is used as a chemical product in industry. The name of the product instead suggests that the product is an end product meant to be used for chlorinating swimming pools. The chlorination of swimming pools is not industrial use.

The opponent has not established genuine use with regard to ‘defoamers’. Only two invoices (Annex 16) contain a reference to ‘defoamers’ (‘antiespumante’), for the amount of approximately EUR 1 500 each. None of the other evidence (sample labels, product sheets, client’s statements, affidavits) mentions these products.

The evidence submitted (Annex 1, 2 and 17) shows use of the earlier sign in Spain during the relevant period of time with regard to ‘polyols’ and ‘catalysts’. This is, however, not sufficient to prove genuine use for the whole category of ‘chemical products for industrial use’. Evidence for two chemical substances is not enough in respect of such a broad category; if it was, the principle of partial use would be undermined. Moreover, the opponent has not provided any information at all with regard to the nature, use or characteristics of the products ‘polyols’ and ‘catalysts’. The opponent has not explained to which exact products the designations ‘polyols’ and ‘catalysts’ in the invoices and on the sample labels refer.

The opponent has not proven genuine use of the earlier mark for chemicals products for industrial use; unprocessed artificial resin; tempering and soldering preparations for metals; adhesives used in industry; solvents in Class 1.

Finally, several invoices submitted (Annex 16) refer to ‘paint removers’ (‘quitapinturas’) and ‘stripping agents’ (‘decapante’).

The opponent has established genuine use for scourers in Class 1 (given in the Spanish version of the list of goods as ‘decapantes’).

Spanish trade mark No 1 939 639 for the figurative mark

The opponent submitted invoices (Annexes 1 and 17), labels (Annex 2) and a brochure (Annex 15) proving the use of the figurative and word trade marks in relation to several kinds of coloured varnishes (eg. ‘Dogusan SA-1045/B274’), inks (ex. ‘Alumet MT-8100/AM077’) and lacquers (ex. ‘Dogusan SA-2009/02’).

There is no proof of use with regard to the goods in Class 2, namely preservatives against rust and the deterioration of wood; dyes material; mordants; raw natural resins; metals in foil and powder form for painters. One of the invoices submitted in Annex 16 lists a ‘rust converter’ (‘Convertidor de Oxido’, OXIFOS HC-9030) among the products sold. However, as it is only one invoice, for the amount of EUR 75, this is not enough to prove use of the earlier mark for ‘preservatives against rust’.

The opponent has established genuine use of colours, varnishes, lacquers in Class 2.

Spanish trade mark No 1 939 640 for the figurative mark

The opponent submitted invoices (Annexes 5 and 20), labels (Annex 7) and a brochure (Annex 15) proving the use of the figurative and word trade marks in relation to several kinds of industrial oils and greases, such as ‘synthetic gear oils’, ‘greases for use with ball bearings’, ‘oil for rectifying’ (ex. ‘AI Cort-22’) and ‘non-toxic degreaser’ (ex. ‘A1 Limp Atox flask’), and lubricants (ex. ‘BI DEF-323’).

The Spanish figurative trade marks appear in all of the invoices and labels in a form slightly different from that in which they were registered. In the invoices, the graphic element (a circle with three dots inside) is omitted. In both the invoices and the labels there is a disclaimer under the sign (i.e. ‘Lubricantes de Alta Tecnologia’). The omitted or added elements do not alter the distinctive character of the trade marks, and the signs as used and registered are broadly equivalent. In fact, the addition ‘Lubricantes de Alta Tecnologia’ is weak, not distinctive and not dominant; the omitted element (a circle with three dots inside) is in a secondary position and not distinctive. The Spanish word trade mark ‘EUROLUBE’ appears in the form in which it was registered in the brochure (Annex 15), the invoice relating to the printing of 200 ‘EUROLUBE’ business cards (Annex 12) and the printout from the website www.eurolube.es (Annex 22). Furthermore, the Spanish figurative trade marks include the words ‘EURO’ and ‘LUBE’, which are easily recognisable and legible, since there is not much variation in the stylisation of the word elements in the figurative marks.

There is no proof of use for fuels (including motor spirits) in Class 4.

The opponent has established genuine use for industrial oils and greases; lubricants in Class 4.

Spanish trade mark No 1 939 642 for the figurative mark

The opponent has not submitted any evidence with regard to the registered services in Class 39. Therefore, it has failed to prove genuine use of this mark.

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:

Spanish trade mark No 1 939 638

Class 1: Scourers.

Spanish trade mark No 1 939 639

Class 2: Colours, varnishes, lacquers.

Spanish trade mark No 1 585 387

Class 3: Cleaning preparations and grease-removing preparations.

Spanish trade mark No 1 939 640

Class 4: Industrial oils and greases; lubricants.

The contested goods are the following:

Class 1: Chemicals for use in industry and science; degreasing preparations for use in manufacturing processes; compositions for removing soldering flux from printed circuit boards and from electrical components; chemical substances for use in the treatment of metal electric contacts and metal electric connections; flux removers; protective coatings including silicone resin coatings; preparations for dissipating heat, including non-silicone and silicone and epoxy compounds; solvents; resins and resin hardeners; freezing agents and preparations; anti-static sprays and preparations; preparations having anti-static properties; adhesives; chemical preparations for restoring texture to rubber rollers; anti-seize substances; mould release agents; polyurethane foams; galvanising compounds and spray; preparations for protecting against weld splatters; demineralised water; silica gel including silica gel sachets; de-watering fluids, preparations and substances; soldering pastes; chemicals for use in etching; photo resists; photo resist developers.

Class 2: Preservatives against rust; anti-rust greases, oils and preparations; anti-tarnishing preparations for metals; protective preparations for metals; preparations for preventing corrosion or tarnishing of metals.

Class 3: Cleaning, scouring and polishing preparations and compositions; paint strippers; graffiti removing compounds; wipes incorporating cleaning preparations.

Class 4: Industrial oils and greases; lubricants; greases for technical purposes; lubricating greases; lubricating oils; technical oils; corrosion penetrating oils and greases.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

The contested chemicals for use in industry and science; degreasing preparations for use in manufacturing processes; compositions for removing soldering flux from printed circuit boards and from electrical components; chemical substances for use in the treatment of metal electric contacts and metal electric connections; flux removers; protective coatings including silicone resin coatings; preparations for dissipating heat, including non-silicone and silicone and epoxy compounds; solvents; resins and resin hardeners; freezing agents and preparations; anti-static sprays and preparations; preparations having anti-static properties; adhesives; chemical preparations for restoring texture to rubber rollers; anti-seize substances; mould release agents; polyurethane foams; galvanising compounds and spray; preparations for protecting against weld splatters; demineralised water; silica gel including silica gel sachets; de-watering fluids, preparations and substances; soldering pastes; chemicals for use in etching; photo resists; photo resist developers are dissimilar to the opponent’s goods in Classes 1, 2, 3 and 4. Although goods in Class 3 are usually combinations of various chemicals for cleaning, they are, in principle, not considered similar to goods in Class 1. The purpose of goods in Class 3, namely as a finished product, differs from that of chemicals in Class 1. The finished products in Class 3 also target a different public from and do not have the same distribution channels as the opponent’s goods.

These contested goods also have nothing in common with the rest of the opponent’s goods in Classes 2, 3 and 4. The natures, methods of use, purposes, producers and distribution channels of the contested goods are different from those of the opponent’s goods in Classes 2, 3 and 4. Furthermore, the goods in question are neither complementary to nor in competition with one another and their relevant publics do not coincide. These goods are, therefore, dissimilar.

Contested goods in Class 2

The contested preservatives against rust; anti-rust greases, oils and preparations; anti-tarnishing preparations for metals; protective preparations for metals; preparations for preventing corrosion or tarnishing of metal are similar to the opponent’s varnishes and lacquers of Spanish trade mark No 1 939 639. These goods can coincide in their producer, end user and distribution channels. The average consumer who carries out home improvements or building work and professionals, such as painters, are well aware that manufacturers and specialised outlets offer various kinds of paints, varnishes, lacquers and complementary products.

Contested goods in Class 3

Cleaning preparations and compositions are identically contained in both lists of goods (including synonyms).

The contested paint strippers, graffiti removing compounds and wipes incorporating cleaning preparations are products for cleaning and are included in the opponent’s cleaning preparations of Spanish trade mark No 1 585 387. Therefore, they are identical.

The contested scouring and polishing preparations and compositions are similar to the opponent’s cleaning preparations in Class 3. All of these goods are chemical products and they have the same nature. Moreover, they may also have the same purpose, namely cleaning. Therefore, it may be necessary to first use an abrasive cloth or scouring liquids to remove rust or dirt before other cleaning or polishing preparations are applied. All of these goods may be produced by the same companies and target the same users. Furthermore, the conflicting goods may be found in the same retail outlets, in particular in specialised shops for motorcyclists. To sum up, the goods are similar (15/04/2015, R 1558/2014-1, BLISTAL / Cristal, § 20; 11/12/2013, R 865/2012-2, CARAMBA / CA CARAMBA (fig.), § 57-60).

Contested goods in Class 4

The contested industrial oils and greases and lubricants are identically contained in the list of goods of Spanish trade mark No 1 939 640 (including synonyms).

The contested lubricating greases; lubricating oils; greases for technical purposes; technical oils; corrosion penetrating oils and greases are included in the opponent’s industrial oils and greases; lubricants of Spanish trade mark No 1 939 640 and therefore they are identical.

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 relevant consumers consist of the public at large and business customers with specific professional knowledge and expertise. The consumer’s level of attention varies from average (e.g. detergent for clothes, washing-up liquid) to high (e.g. specific cleaners for grease traps in pipes or other specialised cleaning preparations).

3. The signs

Spanish trade mark registrations

No 1 939 640 and

No 1 939 639

Spanish trade mark registration No 1 585 387 EUROLUBE
Earlier trade marks	Contested sign

The relevant territory is Spain.

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 marks are a word mark, ‘EUROLUBE’, and a figurative mark consisting of a graphic element (a circle with three dots inside) and two words, ‘EURO’ and ‘LUBE’, written over two lines.

The contested sign is a figurative mark consisting of the word ‘ELECTROLUBE’ in grey letters and underlined in several colours (green, blue, yellow, orange, red and pink).

Although signs must not be artificially dissected, when a sign contains sequences of letters that constitute words, prefixes or suffixes that are known to the public perceiving it, it is likely that the public will mentally divide the mark into the recognised terms or familiar parts forming it (e.g. prefixes or suffixes). In the present case, the elements ‘EURO’ and ‘LUBE’ (in the word mark) are clearly distinguishable as separate elements.

The relevant public will associate the element ‘EURO’ in the earlier signs with Europe or the European currency. This element has only a low degree of distinctiveness, since it alludes to the fact that the marked goods are sold or manufactured in Europe.

The element ‘LUBE’ is weak for the goods at issue in Classes 3 and 4 for which genuine use was proven. The word ‘LUBE’ is a known abbreviation for the English word ‘lubricants’ (https://www.collinsdictionary.com/dictionary/english/lube) and will also be recognised by Spanish consumers as such due to the high degree of similarity between the Spanish word ‘lubricante’ and the English word ‘lubricant’. For the goods in Class 2, this element has a normal degree of distinctiveness.

The element ‘LUBE’ will also be perceived by a part of the public as an indication that these goods can be used to clean or remove lubricants. To optimise cleaning or degreasing of lubricants, cleaning and grease-removing preparations have to be chosen such that they are appropriate for removing lubricants. The element ‘LUBE’ will, therefore, be perceived by these consumers as alluding to the fact that the marked products are particularly well suited for use with lubricants.

A similar reasoning applies to the verbal element of the contested mark: ‘ELECTROLUBE’. The element ‘ELECTRO’ will be perceived by the relevant Spanish consumers as an abbreviation of the word ‘electrónico’, meaning ‘electronic’. This element has a normal degree of distinctiveness.

Visually, the signs coincide in their first letters, ‘E’, and their endings, ‘ROLUBE’. They differ in their remaining letters, ‘U’ in the earlier marks and ‘LECT’ in the contested sign. They also differ in the coloured underlining present only in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the pronunciation of the letters ‘LUBE’. The pronunciation differs in the sound of the letters ‘EURO’ of the earlier signs and ‘ELECTRO’ of the contested mark. However, since, in the relevant territory (Spain), the word ‘EURO’ is pronounced as [ˈeŭro], the pronunciation also coincides in the pronunciation of the first letter ‘E’. Moreover, the two letters ‘RO’ of the second syllable in the earlier marks and the third syllable in the contested sign are also pronounced identically.

Therefore, the signs are aurally similar to an average degree.

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

The coinciding word ‘LUBE’ (alluding to ‘lubricants’) creates an average degree of similarity between the signs, with the signs differing in the concepts of their elements ‘ELECTRO’ and ‘EURO’.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of weak elements (‘EURO’ and ‘LUBE’) (for some of the goods) in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods in Class 1 are dissimilar and the contested goods in Classes 2, 3 and 4 are similar and identical to the opponent’s goods.

With regard to the contested goods in Class 2, the relevant public will focus its attention on the verbal element ‘LUBE’, which has no meaning in relation to these goods, which are not lubricants. The differences in the beginnings of the signs cannot outweigh the similarities between the marks when they are perceived as a whole. This is all the more so because the element ‘EURO’ has a low degree of distinctiveness and its impact is limited for the relevant public, which will pay less attention to the weak element ‘EURO’ and more attention to the other element, ‘LUBE’, of the earlier marks, which is identically reproduced in the contested mark.

Consumers tend to remember similarities, rather than dissimilarities, between signs, since they rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

The Opposition Division finds that there is a likelihood of confusion on the part of the public, and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registrations for the goods in this class.

It follows from the above that the contested trade mark must be rejected for the contested goods in Class 2.

With regard to the contested goods in Classes 3 and 4, as already explained, the professional public will recognise the word ‘LUBE’ in both the earlier marks and the contested sign as an English word meaning ‘lubricants’. The impact of the element ‘EURO’ in the earlier marks is limited when assessing the likelihood of confusion between the signs, since ‘EURO’ will be understood as an abbreviation of ‘Europe’ or ‘European’. The most distinctive element of the contested sign is ‘ELECTRO’, which will be perceived as a fanciful word in relation to the goods at issue. Therefore, the Opposition Division is of the opinion that the similarities between the marks are not sufficient to lead to a likelihood of confusion for the relevant, attentive, professionals (and average consumers) and that the overall differences between the signs are sufficient for these attentive consumers to be able to distinguish between them, even for identical goods.

As regards the contested goods in Class 1, which are dissimilar to the opponent’s goods, as the similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent’s scourers in Class 1 of Spanish mark No 1 939 638 are dissimilar to the contested goods. According to Article 8(1)(b) EUTMR, a similarity between the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in relation to these 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Julie GOUTARD

Birgit FILTENBORG

Loreto URRACA LUQUE

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.