FluoroSLIP | Decision 2725524 - Solvay Specialty Polymers Italy, SpA v. SHAMROCK TECHNOLOGIES BVBA

Date Published: Sep 28, 2017

OPPOSITION No B 2 725 524

Solvay Specialty Polymers Italy, SpA, Viale Lombardia, 20, 20021 Bollate (MI), Italy (opponent), represented by Stephanie Missotten, Solvay Société Anonyme, rue de Ransbeek, 310, 1120 Bruxelles, Belgium (professional representative)

a g a i n s t

Shamrock Technologies BVBA, Heersterveldweg 21, 3700 Tongeren, Belgium (applicant), represented by Louis · Pöhlau · Lohrentz, Merianstr. 26, 90409 Nürnberg, Germany (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 725 524 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 242 977, namely against all of the goods in Class 1. The opposition is based on European Union trade mark registration No 3 435 005. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 the trade mark on which the opposition is based, namely European Union trade mark No 3 435 005.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 21/03/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 21/03/2011 to 20/03/2016 inclusive.

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

Class 1:        Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 17:        Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

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 23/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 28/11/2016 to submit evidence of use of the earlier trade mark. On 28/11/2016, 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:

• Twelve invoices addressed to clients in Germany, France, Italy, Austria and the United Kingdom. The invoices were issued between 2011 and 2016 and show sales of a few hundred kilograms of FLUOROLINK products (FLUOROLINK A10-P, FLUOROLINK E10/H, FLUOROLINK AD1700, FLUOROLINK S10, FLUOROLINK MD700, etc.).

• Two technical bulletins dated 2014 providing information on recommended procedures for using FLUOROLINK® products: FLUORORLINK® E-Series PFPE and FLUOROLINK® A10-P.

• Two brochures. One is for specialty polymers and contains an overview of the opponent’s portfolio of brands (over 30 brands available in over 1 500 formulations). FLUOROLINK® is mentioned under fluorinated fluids as a line of versatile products used for surface treatment or as a polymer modifier. The other brochure shows the FLUOROLINK product range and contains data on the properties of these products: FLUOROLINK products are based on bi-functional perfluoropolyethers (PFPE) and are used as surface modifiers for polyurethanes and polyesters as epoxies, UV-curable coatings and additives for waterborne paints and for surface treatment of glass, ceramics and metals.

• Eleven technical data sheets dated 2013, 2015 and 2016 providing information on the characteristics of different FLUOROLINK® products (FLUOROLINK® A10-P, FLUOROLINK® AD1700, FLUOROLINK® MD700, etc.) and their possible uses (polymer additives or modifiers, additives for paints and coatings, additives for surface treatment).

• A printout from the website www.solvay.com dated 26/09/2016 providing an overview of FLUOROLINK® products and their applications, for example as a building block for polymer modification or surface treatment in textiles, tiles, stones, ceramics and glass or as a paint ingredient.

• A copy of the registration of the domain name fluorolink.eu, which has been registered since 2008.

• Eight photographs of samples of FLUOROLINK® product packaging, including 1kg and 5kg containers.

The invoices show that the place of use is the European Union. This can be inferred from the languages of the documents (English, French, German and Italian), the currency mentioned (euros) and some addresses in Germany, France, Italy, Austria and the United Kingdom. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period, except the printout from the website www.solvay.com, which is dated 26/09/2016.

The documents filed, namely the invoices, technical bulletins and technical data sheets, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent has used the earlier trade mark, ‘FLUOROLINK’, with additional letters and numbers (e.g. ‘E10/H’, ‘A10-P’ and ‘AC1700’) or explanatory expressions (e.g. ‘PFPE’ meaning perfluoropolyether). However, the Opposition Division finds that these additions do not alter the distinctive character of the registered trade mark, because the earlier mark is clearly separated from the additional elements (e.g. by the insertion of the ‘®’ symbol) and the additional elements are in secondary positions (after the element ‘FLUOROLINK’). Furthermore, these additions are simply indications of characteristics of the goods or indications of the product series and are therefore descriptive.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

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

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

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 will, 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.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for PFPE chemical preparations used as polymer additives and modifiers, additives for paints and coatings and additives for surface treatment. These goods can be considered an objective subcategory of the opponent’s chemicals used in industry in Class 1. The Opposition Division disagrees with the opponent’s view that use of the earlier mark is also proven for semi-finished products in Class 17, since, as is evident from the materials submitted, the opponent’s products are various additives and modifiers and cannot be considered to fall into any of the broad categories in Class 17 for which the earlier mark is registered. Therefore, the Opposition Division considers that the evidence demonstrates genuine use of the trade mark only for PFPE chemical preparations used as polymer additives and modifiers, additives for paints and coatings and additives for surface treatment.

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:        PFPE chemical preparations used as polymer additives and modifiers, additives for paints and coatings and additives for surface treatment.

The contested goods are the following:

Class 1:        Adhesives for use in industry; Chemical preparations and materials for film, photography and printing; Chemical substances, chemical materials and chemical preparations, and natural elements; Unprocessed and synthetic resins; Chemical additives for use in the production of coatings; Chemical additives; Chemical additives for use in the production of lubricants; Chemical additives for use in the manufacture of cosmetics; Chemical additives for paints and surface coatings; Chemical additives for paint; Additives (Chemical -) for printing inks; Chemical additives for use in the production of inks.

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.

The goods at issue are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention is high owing to the nature of the goods.

3. The signs

FLUOROLINK	FluoroSLIP
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, ‘FLUOROLINK’. Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51). Consequently, the public in the relevant territory will perceive the element ‘FLUORO’ as referring to fluorine (the chemical element with atomic number 9) or to fluorescence (the visible or invisible radiation emitted by certain substances). In relation to the goods in question, this element will be weak, as it alludes to their chemical component (fluorine) or their properties. The element ‘LINK’ is an English word, which describes a bond that connects one thing with another. Even if it will be understood by a part of the public (e.g. the English-speaking part of the public), it has no meaning in relation to the relevant goods and therefore it is distinctive.

The contested sign is also a word mark, ‘FluoroSLIP’. As regards word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters. Along the same line of reasoning as in the case of the earlier mark, the relevant professional public will identify in the contested sign the elements ‘Fluoro’ and ‘SLIP’.

The considerations regarding the concept and distinctiveness of the element ‘Fluoro’ in the earlier mark equally apply to the contested sign. The element ‘SLIP’ refers to the act of sliding and will be understood as such by the English-speaking part of the public. However, it has no meaning in relation to the relevant goods and therefore it is distinctive. For the remaining part of the public, this element will have no meaning and therefore it is also distinctive.

Visually, the signs coincide in the element ‘FLUORO-’. However, they clearly differ in their remaining elements, namely ‘-LINK’ in the earlier sign and ‘-SLIP’ in the contested sign.

Although it is true that consumers read from left to right and therefore tend to focus on the beginning of a sign when confronted with a trade mark, in the present case, despite the coinciding initial part of the signs, consumers will pay less attention to it because, as explained above, it is weak. Consequently, the signs are visually similar to a lower than average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the weak element ‘FLUORO-’, present identically in both signs. The pronunciation differs in the sound of the elements ‘-LINK’ and ‘-SLIP’. As explained above, although the commonality in the weak element cannot be entirely ignored, its impact will be limited and consumers will instead focus on the signs’ endings, which differ. Consequently, the signs are aurally similar to a lower than average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, they coincide in the meaning of the weak element ‘FLUORO’. Therefore, the signs can be considered conceptually similar only to a lower than average degree. For the English-speaking part of the public specifically, for which the signs also differ in the clearly different concepts of the elements ‘-LINK’ and ‘-SLIP’, outlined above, the signs are conceptually similar, if at all, to a very low 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 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods assumed to be identical target the specialised public and the degree of attention is high.

It is now established practice (Guidelines, Part C, Opposition, Section 2, Identity and Likelihood of Confusion, Chapter 4, Distinctiveness, paragraph 4.2.5) that, when marks have in common an element with a low degree of distinctive character, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression conveyed by the marks. Considering this, the different endings of the signs, which have no features in common, suffice to offset the commonality between the signs that lies in the coinciding weak element.

The above conclusion is not called into question by the previous decisions of the Office referred to by the opponent to support its arguments that the signs should be found similar, first because in the present case a certain degree of similarity between the signs was also established and second because in the said decisions where likelihood of confusion was found, unlike in the present case, the beginnings of the signs were not found to be weak.

Therefore, the Opposition Division considers that, contrary to the opponent’s arguments and despite the assumed identity between the goods in question, the differences between the marks are sufficient to avoid any likelihood of confusion.

Considering all the above, 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 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.

The Opposition Division

Jorge ZARAGOZA GÓMEZ

Arkadiusz GORNY

Denitza STOYANOVA-VALCHANOVA

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.