IP 1000 | Decision 2624362 - Colin Nash v. Willow Polymers Limited
Date Published: Sep 25, 2017
OPPOSITION No B 2 624 362
Colin Nash, Unit 11, Orleton Road, The Business Park, Ludlow Shropshire SY8 1XF, United Kingdom (opponent), represented by Virtuoso Legal, Grove House, Mansion Gate Drive, Chapel Allerton, Leeds LS7 4DN, United Kingdom (professional representative)
a g a i n s t
Industrial Polymers Europe Limited, 25 New Road, Chatteris Cambridgeshire PE16 6BJ, United Kingdom (applicant).
On 06/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 624 362 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods (in Classes 1 and 2) of European Union trade mark application No 14 685 655 (word mark:
“IP 1000”). The opposition is based on European Union trade mark registration
No 11 700 374 (word mark: “SL1000”) and a non-registered figurative trade mark used in the United Kingdom. The opponent invoked Article 8(1)(b) and 8(4) EUTMR.
ADMISSIBILITY
According to Rule 15(2)(b) EUTMIR, the notice of opposition must contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:
where the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, an indication of its kind or nature, a representation of the earlier right, and an indication of whether this earlier right exists in the whole Union or in one or more Member States, and if so, an indication of the Member States.
According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.
On 14/12/2015, the opponent filed a notice of opposition against the contested application. However, the opponent failed to include an image of the earlier non-registered right used in the United Kingdom, which was described as ‘figurative’.
The opposition must, therefore, be rejected as inadmissible, as far as it is based on this earlier right and the related ground of Article 8(4) EUTMR.
The Opposition Division will continue the examination in relation to earlier European Union trade mark No 11 700 374.
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 in Classes 1 and 2 on which the opposition is based are, inter alia, 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 2: Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants; Mordants; Raw natural resins; Metals in foil and powder form for painters, decorators, printers and artists; Coatings for tarred felt [paints]; Coatings [paints].
The contested goods in Classes 1 and 2 are 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; unprocessed plastics in the form of liquids, chips or granules; urethane polymer products, urethane elastomeric coatings; protective chemical coatings; chemical coatings.
Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; protective coatings in the form of paint, varnishes and/or lacquer.
Contested goods in 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 are identically contained in both lists of goods.
The contested unprocessed plastics in the form of liquids, chips or granules are included in the broad category of the opponent’s unprocessed plastics. Therefore, they are identical.
The contested urethane polymer products, urethane elastomeric coatings; protective chemical coatings; chemical coatings are included in the broad category of, or overlap with, the opponent’s Chemicals used in industry. Therefore, they are identical.
Contested goods in Class 2
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists are identically contained in both lists of goods.
The contested protective coatings in the form of paint, varnishes and/or lacquer are included in the broad category of, or overlap with, the opponent’s Coatings for tarred felt [paints]; Coatings [paints]. Therefore, they are identical.
- 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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary between average and high, because they will not be purchased on a daily basis and will be chosen carefully.
- The signs
SL1000 | IP 1000 |
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 signs are word marks which are protected in all typefaces.
The element that the signs have in common, namely ‘1000’, will be associated with the quantity in which the product is sold and/or the viscosity of the liquid. Bearing in mind that the relevant goods are, inter alia, coloured paints, dyes and corrosion inhibitors, this element is non-distinctive for some of these goods in Class 2, such as paints, varnishes, lacquers. These goods are frequently sold in 1000ml or 1000mg packages.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually and aurally, the signs have the same length and structure, namely two letters followed by the number 1000. However, the letters ‘SL’ of the earlier trade mark and ‘IP’ of the contested sign have nothing in common. They are formed and pronounced completely differently in all territories of the European Union. The number that the signs have in common, namely ‘1000’, although distinctive for some of the goods, cannot outweigh the clearly different beginnings of the signs. The degree of similarity is even lower when ‘1000’ is non-distinctive for some of the goods. The signs are visually and aurally similar to a below average degree.
Conceptually, the number ‘1000’, present in both signs, has in each case the same meaning for the public. When used for those goods for which it is distinctive, the signs are conceptually identical. For the goods for which it is non-distinctive (see above), it has no bearing on the conceptual comparison. The letter combination ‘IP’ could be understood by a part of the public as an abbreviation for ‘intellectual property’ or ‘internet protocol’. For the part of public that will perceive this meaning, the signs are conceptually not similar. For the rest of the public, this element has no bearing on the conceptual comparison.
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.
According to the opponent the earlier trade mark has a reputation in the European Union in connection with all of the goods. 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 refers in particular to his witness statement. This is not sufficient to demonstrate a reputation. There is no information as regards turnover or sales figures, surveys on the mark’s recognition, advertisements, contributions from professional associations and/or extracts from tax and/or commercial balance documents.
Having examined this material, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation through its use.
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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision for some of the goods.
- Global assessment, other arguments and conclusion
The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).
The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).
The contested goods are identical.
The signs are visually and aurally similar to a below average degree. Conceptually, the outcome can be different (see above).
Taking into account the relevant visual and aural differences between the signs, their different beginnings, the no more than normal degree of distinctiveness of the earlier trade mark and the at least average degree of attention of the relevant consumers, there is, even for the identical goods, no likelihood of confusion. This will be even more the case when the public has a higher than average degree of attention.
Contrary to the opponent’s arguments, the differences between the signs are sufficient to prevent a likelihood of confusion. The public will not think that the signs come from the same undertaking or economically linked undertakings.
Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.
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, he must bear the costs incurred by the applicant in the course of these proceedings.
Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.
The Opposition Division
Swetlana BRAUN | Peter QUAY | Julia SCHRADER |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.