markol | Decision 2745803
Date Published: Sep 24, 2017
OPPOSITION No B 2 745 803
WAKOL GmbH, Bottenbacher Str. 30, 66954 Pirmasens, Germany (opponent), represented by Geitz Truckenmüller Lucht Christ Patentanwälte PartGmbB Werthmannstr 15, 79098 Freiburg, Germany (professional representative)
a g a i n s t
Edward Łukaszewicz, ul. Wąska 3, 96-515 Teresin, Poland (holder), represented by Pat Commerce, Wiolinowa 3/3, 02-785 Warszawa, Poland (professional representative).
On 30/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 745 803 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 of international registration designating the European Union No 1 280 056 for the word mark ‘MARKOL’. The opposition is based on, inter alia, European Union trade mark registration No 216 010 for the word mark ‘WAKOL’. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 216 010.
- The goods
The goods on which the opposition is based are the following:
Class 1: Adhesive glues for industrial purposes (except those with silicon bases) as well as diluents for these.
The contested goods are the following:
Class 1: Chemical products used in industry; detergents used in industrial and manufacturing processes; organic chemicals for cleaning; chemical preparations for cleaning heaters; dehydrants for industrial purposes; chemical agents for cleaning chimneys; chemical reagents other than for medical or veterinary purpose; preparations for bleaching for industrial purposes; preparations for degreasing used in manufacturing processes; agents or removing oils; preparations for removing lubricants used in the manufacturing processes; curing substances; chemicals for preventing mold/rust; softeners for industrial purposes; surfactants; active substances absorbents; talc; fireproof materials; chemical preparations for the manufacture of paints; chemical preparations for the manufacture of enamel with the exception of pigments; chemical preparations for tarnishing enamel; products for blushing enamel; products for opacity enamel; chemical preparations for the manufacture of dyes; salts for coloring metals; chemical dyes for enamel and glass; fixing agents for metals; chemical products for enliven colors for industrial use; chemicals for enliven colors of dyestuffs for industrial purposes; decolorizing agents for industrial purposes; preparations for bleaching of organic materials; solvents for paints; acetone; artificial and synthetic resins; plastics in the form of powders, pastes, liquids, emulsions, suspensions, flakes, granules and tablets, all used in industry; water-soluble and insoluble polymers; synthetic resins in the crude form; acrylic resins in the crude form; epoxy resins in the crude form; synthetic resins in the crude form; artificial resins in the crude form; plastics in the crude form; silicones; plasticizers; plastics for absorbing oils; synthetic materials for absorbing oils; tanning substances; tanning stains; tanning bark; tannic wood; tannins; vegetable tannins; preparations for tanning; tannic acid; sumac for tanning; oils for tanning industry; oils for tanning of leathers used in industry; oils for dressing of leathers; chemical products for renovation of leathers; agents for dressing leathers except oils; preparations for softening leathers; chemical agents for impregnation of leathers; chemical agents conferring waterproof to leathers; mastics for leather; preparations for dressing of leathers except oils; chemical substances for tanning leathers; chemical preparations for enliven colors of textile materials; chemical preparations for impregnating textile materials; chemical preparations conferring waterproof to textile materials; chemical agents preventing the formation of stains on fabrics; finishing; adhesives used in industry; glues; adhesives for industrial purposes; adhesives for wood; adhesives carpentry; adhesives for furniture; upholstery adhesives; parquet adhesives; economic adhesives; adhesives for posters; wall adhesives; glues for leathers; adhesives footwear; adhesives for ceramic tile; adhesives for metal; adhesives for plastics; adhesives for ceramics; adhesives for porcelain; adhesives for glass; dextrin glues; starch plywood; mucilage of starch for purposes other than stationery and home; starch slurries other than for office and home use; gluten adhesives not for office or home use; gluten for industrial purposes; fish glue other than for paper or home use or to foodstuffs; preparations for bonding; preparations for priming; substances for removing wallpapers; materials for bonding rubber other than for office or home use; adhesive substances for repairing of broken objects; binders for repairing of broken objects; preparations for debonding; agents for debonding; chemical agents for dissolution of starch-agents for debonding; adhesives for industrial purposes; water glass; oil binders; guriun balsam for production of varnishes; putty; putty used in glass-making; pitch for ruffing; preparations preservatives used in masonry except paints and oils; formulations against moisture used in masonry except of paints and oils; agents for building maintenance except of paints and oils; preservatives of cement except paints and oils; preservatives of bricks except paints and oils; preservatives of ceramics except paints and oils; chemicals impregnating binders except of paints; glaze for ceramics; binders for concrete; chemicals for aeration of concrete; formulations for maintenance rubber/caoutchouc; putty used in car body repairs; waxes for cleaning; chemicals against tarnishing of glass; agents for tarnishing of glass; chemical preparations for coloring of glass; chemical agents against tarnishing of glass; preparations preventing from formation of incrustations; lead oxide.
Class 2: Paints; primers; watercolor paints; fixing agents for watercolor paint; gamboge used in painting; bactericidal paints; fireproof paints; heat-resistant paints; paint containing asbestos; aluminum paints; paints used in ceramics; water emulsion paints; water-soluble paints; paints diluted with water; water-dispersive priming paints; organic dispersion paints; water-based paints; organosilicon paints; casein water paints; glue water paints; milk of lime; slaked lime; solution of slaked lime in water; facade paints; silicone facade paints; acrylic facade paints; structural facade paints; polyvinyl paints; paints to roofs; exterior paints for wood; chemical durable paints; epoxy paints; acrylic paints; anti-pollution paints; oil paints; anticorrosion paints; special paints; paints for priming; acrylic paints for priming; diluents for paints; turpentine; binders for paints; drying agents for paints-siccatives; thickeners for paints; coatings; coatings for roofing with tar paper; coatings for tarring of tar paper; wood coatings; glaze; oil varnishes; lacquers; asphalt paints; bituminous paints; copal varnish; bronzing varnishes; wood lacquers; varnishes for furniture; lacquers for parquets; anticorrosion lacquers; solvents for thinning lacquers; diluents for lacquers; fixing agents for varnishes; enamels; enamel for painting; alkyl enamels; acrylic enamels; acryl-based enamels; anticorrosion enamels for metal; ground coats; priming preparations; building priming preparations; printing inks; inks for photocopiers; toners for photocopiers; cartridges (full with toner) for photocopiers; cartridges (full with toner) for printers; ink for engraving; printing mix; corrosion inhibitors for metals; preparations preventing from tarnishing of metals; preparations protecting against rust; antirust oil; antirust lubricants; anticorrosive agents; protective coatings for vehicle chassis; protective coatings against corrosion of vehicle chassis; anticorrosion tapes; oils for wood conservation; preparations for conservation of wood; carbonyl for conservation of wood; creosote for protecting of timber; mortars for wood; dyes; auramine; whites; fustic; indigo; furnace black; cobalt oxide; alizarin dyes; aniline dyes; thickeners for dyes; pigments; anhydride titanium; zinc white; white lead; silver emulsions; carbon black; colorants; sandarac; sumac for varnishes; red lead; orange lead; stains; stains for wood; dyes for wood; stains for leathers; dyes for leathers; inks for dyeing leather; inks for marking animals; dyes for shoes; terra di siena; wood for coloring; extract from tinctorial wood; natural resins in the raw state; asafoetida; canadian balsam; laque; rosin; mastic; metal foils for use by painters and decorators printers and artists; silver foil in sheets; metals in powder for painters; brown powder a mixture of a copper powder and tin powder for painting; aluminum powder to painting; sculptural putty; carpenter's putty.
Class 16: Adhesives for stationery or for home purposes; fish glue for paper or for home use; mucilage of starch for paper or home use; gluten adhesives for stationery or home use; sealing-wax to sealing; labels; stickers; address labels; self-adhesive plastic films for palletizing; adhesive bands for stationery or home use; adhesive tapes; adhesive tapes for stationery or home use; self-adhesive tapes for stationery or home use; adhesive tape dispensers
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.
- 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, because of the chemical nature of some of the goods and the impact they have on industry, as well as because of the potential risks associated with the goods.
- The signs
WAKOL | MARKOL |
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 the word mark ‘WAKOL’. This earlier mark has no meaning for the relevant public and is, therefore, distinctive.
The contested sign is the word mark ‘MARKOL’. Part of the relevant public, namely the Estonian-speaking part of the public, will see the surname ‘MARKO’ and the letter ‘L’ will suggest something belonging to a person called ‘MARKO’. For the remaining part of the public, the contested mark has no meaning. In any case, the mark is distinctive for the relevant public either because it has a meaning that it is not descriptive, allusive or otherwise weak for the relevant goods or because it has no meaning.
Visually, the signs coincide in the sequence of letters ‘KOL’ at the end of both signs. However, they differ in the first part, namely ‘WA’ of the earlier mark versus ‘MAR’ of the contested mark. It is important to remark the fact that the signs coincide in one letter, ‘A’, at the beginnings but these beginnings have different number of letters and they do not coincide neither in the first letter nor in the last letter. 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. Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable ‘KOL’, present identically at the end of both signs. In relation to the first syllable of the signs, the pronunciation coincides in the letter ‘A’ but the differences in the (more impacting) first syllable(s) are nevertheless clearly audible in particular because of the sound of the first letters ‘W’ versus ‘M’, which is obvious, and of the additional sound of the letter ‘R’ in the contested sign. Therefore, the signs are aurally similar to a low degree.
Conceptually, as previously established, the Estonian-speaking part of the relevant public will perceive the meaning of the contested sign, as explained above, however, the earlier mark has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
The remaining part of the public in the relevant territory will not perceive any meaning in the signs. 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.
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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks 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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
From the visual and aural point of view, the signs are similar but only to a low degree. For part of the public, namely Estonian-speaking part of the public, the signs are conceptually not similar whereas, the conceptual aspect is neutral as neither of the signs has a meaning for the remaining part of the public. The distinctiveness of the earlier mark must be seen as normal.
Considering all of the above and the overall impressions conveyed by the signs, the differences between the marks explained in section c) of this decision mean that the signs can be distinguished effectively, even assuming that the goods, which target the public at large and business customers with specific professional knowledge or expertise, whose degree of attention varies from average to high, are identical. Therefore, there is no likelihood of confusion on the part of the public.
The opponent has also based its opposition on the following earlier trade marks:
- German trade mark registration No 1 059 185 for the word mark ‘WAKOL’ for the goods ‘adhesives for industrial purposes as well as thinners for this (except such of silicone base); all aforesaid goods are only for end user intended’ in Class 1.
- European Union trade mark registration No 3 167 343 for the figurative mark
for the goods ‘adhesives used in industry and thinners therefor; solvents’ in Class 1.
These earlier rights invoked by the opponent are not more similar to the contested sign than the earlier mark already compared above (in relation to which a likelihood of confusion has been excluded for identical goods), since one of these marks is the same as the one compared above and the other one is a figurative mark with a verbal element slightly stylised. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 opponent is the losing party, it must bear the costs incurred by the holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Steve HAUSER | Alexandra APOSTOLAKIS | Boyana NAYDENOVA |
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.