PAINTEXPERTS | Decision 2738220

Date Published: Sep 24, 2017

OPPOSITION No B 2 738 220

EMV-Profi Systemzentrale GmbH & Co. KG, Triftenstrasse 115, 32791 Lage, Germany (opponent), represented by Ostriga Sonnet Wirths & Vorwerk, Friedrich-Engels-Allee 430-432, 42283 Wuppertal, Germany (professional representative)

a g a i n s t

S.C. Mp Color Profi S.R.L., Str Industriilor nr. 12, Chiajna, jud. Ilfov, Romania (applicant), represented by S.C. Weizmann Ariana & Partners Agentie De Proprietate Intelectuala S.R.L., str. 11 Iunie nr. 51, sc. A etaj 1, ap. 4, sector 4, 040171 Bucharest, Romania (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 738 220 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 and services of European Union trade mark application No 15 283 451 , namely against all the goods in Classes 1, 2 and 3 and some of the services in Class 35. The opposition is based on the flowing trade mark registrations:

1. German trade mark No 302 014 057 807 ;

2. German trade mark No 302 014 057 150 ;

3. German trade mark No 302 014 057 146 ;

4. German trade mark No 302 014 057 152 .

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.

1. The goods and services

The goods and services on which the opposition is based are the following:

1. German trade mark No 302 014 057 807

Class 1:        Chemical products for industrial purposes; chemical products for scientific purposes; chemical products for photographic purposes; chemical products for agricultural purposes; chemical products for horticultural purposes; chemical products for forestry purposes; unprocessed artificial resins; unprocessed plastics; fertilizers; fire-extinguishing compositions; means for tempering of metal; means for soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

2. German trade mark No 302 014 057 150

Class 2:        Paint, varnishes, lacquers; rust preservatives, wood preservatives; colorants; stains; raw natural resins; sheet metals in foil and powder form for painters, decorators, printers and artists.

3. German trade mark No 302 014 057 146

Class 1:        Chemical products for industrial purposes; chemical products for scientific purposes; chemical products for photographic purposes; chemical products for agricultural purposes; chemical products for horticultural purposes; chemical products for forestry purposes; unprocessed artificial resins; unprocessed plastics; fertilizers; fire-extinguishing compositions; means for tempering of metal; means for soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2:         Paint, varnishes, lacquers; rust preservatives, wood preservatives; colorants; stains; raw natural resins; sheet metals in foil and powder form for painters, decorators, printers and artists.

4. German trade mark No 302 014 057 152

Class 35:        Retail services with respect to chemical products for industrial purposes; chemical products for scientific purposes; chemical products for photographic purposes; chemical products for agri-cultural purposes; chemical products for horticultural purposes; chemical products for forestry purposes; unprocessed artificial resins; unprocessed plastics; fertilizers; fire-extinguishing com-positions; means for tempering of metal; means for soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry, paint, varnishes, lacquers; rust preservatives, wood preservatives; colorants; stains; raw natural resins; sheet metals in foil and powder form for painters, decorators, printers and artists; washing and bleaching agents, cleaning agents, polishing agents, degreasers, abrasives, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, industrial oils, technical greases, lubricants.

The contested goods and services are the following:

Class 1:        Putties, and fillers and pastes for use in industry; composition of adhesives and fillers for repairing seals; coated wollastonite [calcium metasilicate] for use as a reinforcing filler in adhesives; coated wollastonite [calcium metasilicate] for use as a reinforcing filler in paints; coated wollastonite [calcium metasilicate] for use as a reinforcing filler in sealants; latex glue [not for stationery or household purposes]; adhesives [sizing]; polyurethane adhesives; adhesive melts; adhesives for waterproofing; tyre repair adhesives; adhesives for use in industry.

Class 2:        Dyestuffs; paints for protection against corrosion; lacquers and varnishes; thickeners for lacquers; preparations for drying varnishes; preparations for thinning lacquer; bonding agents for lacquers; automotive paints; architectural paints; wood lacquers; wood oils; binders for varnishes; thinners and thickeners for coatings, dyes and inks.

Class 3:        Floor wax; polishing wax; polish for furniture and flooring; buffing compounds; grinding preparations.

Class 35:        Bringing together, for the benefit of others, of putties and fillers for use in industry, adhesive compositions and putties for repairing sealing elements, coated wollastonite (calcium metasilicate) for use as a reinforcing filler in adhesives, coated wollastonite (calcium metasilicate) for use as a reinforcing filler in paints, coated wollastonite (calcium metasilicate) for use as a reinforcing filler in sealants; bringing together, for the benefit of others, of dyes and colorants, paints for protection against corrosion, lacquers, thickeners for lacquers, preparations for drying varnishes, preparations for thinning lacquer, bonding agents for lacquers, automotive paints, architectural paints, wood lacquers, oils for the preservation of wood, binders for varnishes, thinners and thickeners for coatings, dyes and inks; bringing together, for the benefit of others, of floor wax, polishing wax, polish for furniture and flooring, buffing compounds, abrasives, cups of paper or plastic; bringing together, for the benefit of others, of latex glue (not for stationery or household purposes), size for finishing and priming, polyurethane adhesives, adhesive melts, adhesives for waterproofing, tyre repair adhesives; bringing together, for the benefit of others, of adhesives for use in industry.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks.

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 goods and services assumed to be identical are directed at both the public at large and at business customers with specific professional knowledge.

The degree of attention is considered average.

3. The signs

1) German trade mark No 302 014 057 807

2) German trade mark No 302 014 057 150 3) German trade mark No 302 014 057 146 4) German trade mark No 302 014 057 152
Earlier trade marks	Contested sign

The relevant territory is Germany.

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 trade marks are figurative trade marks containing the verbal element ‘PROFI’ in slightly stylised black upper case letters in trade marks No 1, No 2 and No 4; in trade mark No 3, the letters are red. Earlier trade marks No 2 and No 3 contain another verbal element above the verbal element ‘PROFI’: trade mark No 2 contains the verbal element ‘FARBEN’ in smaller slightly stylised blue upper case letters and earlier trade mark No 3 contains the verbal element ‘SPAR’ in smaller slightly stylised black upper case letters. Trade mark No 4 contains the verbal element ‘EMV’ before the verbal element ‘PROFI’ with a hyphen between the verbal elements.

All the earlier trade marks contain a figurative element to the left of the verbal elements. The element is depicted as an aslant circle divided by white lines into four parts. The bottom right part is missing and the first letters of the verbal elements are in this area. The remaining three parts are in different colours. A horizontal line is drawn from the centre of the circle above the verbal elements in trade marks No 1 and No 4 and between the verbal elements in trade marks No 2 and No 3.

The verbal element ‘PROFI’, present in all the earlier trade marks, will be perceived by the relevant public as an abbreviation of the word ‘professional’ and will be associated with the meaning that the goods sold under these marks target and are used by professionals. Therefore, it is non-distinctive in relation to all the goods and services on which the opposition is based.

The verbal element ‘FARBEN’ in earlier trade mark No 2 means ‘colours’ in German and is non-distinctive in relation to the goods in Class 2, such as paints, varnishes and lacquers. The combination of both verbal elements, namely ‘FARBEN PROFI’, will be perceived by the relevant public as an indication that the goods are for professional use. Therefore, it is non-distinctive in relation to the aforementioned goods in Class 2 on which the opposition is based.

The verbal element ‘SPAR’ in earlier trade mark No 3 means ‘save’ in German, namely the imperative form of the verb ‘save’, and it is also used as a prefix in word combinations referring to the saving of something. The combination of verbal elements, namely ‘SPAR PROFI’, is descriptive and laudatory in relation to the goods in Classes 1 and 2 on which the opposition is based, as it refers to goods for professionals that help to save money; therefore, it is non-distinctive.

The verbal element ‘EMV’ has no meaning in German and is distinctive in relation to the opponent’s services in Class 35.

The figurative elements of all the earlier trade marks, namely the circles, are clearly visible and are placed to the left of the verbal elements; however, these are simple coloured figurative shapes and are likely to be perceived by the consumers as mere decorative elements or as depicting the characteristics, namely the colours, of some of the goods in Class 2 on which the opposition is based and not as an element indicating the commercial origin of the goods and services; therefore, the degree of distinctiveness of these figurative elements is low.

The line above or between the verbal elements of the earlier trade marks is a basic figurative element and its degree of distinctiveness is very low.

Neither the figurative elements nor the verbal elements are visually more eye-catching than the other elements; therefore, the earlier trade marks have no elements that could be considered clearly more dominant than other elements.

The contested sign is a figurative mark containing the verbal element ‘PAINTEXPERTS’ in standard grey upper case letters; the letters ‘PAINT’ are in a lighter shade of grey than the letters ‘EXPERTS’.

Although ‘PAINTEXPERTS’ appears as one element, due to the different shades of grey the consumers will break it down into the elements ‘PAINT and ‘EXPERTS’. ‘PAINT’ is a well-known English word, which has no meaning in German; however, taking into account that the relevant goods and services also target a professional public, it cannot be excluded that a part of the relevant public will understand it. ‘EXPERTS’ means persons who have knowledge or skill in a particular area. It will be understood by the relevant public, since it is very similar to the equivalent word in German, ‘EXPERTE’. The expression ‘PAINTEXPERTS’ will be perceived as a whole as referring to experts in the area of paints. It is not distinctive in relation to the relevant goods and services, since not only goods in Class 2 but also services in Class 35 and goods in Classes 1 and 3 are related to paints and products that could be used with paints.

The figurative element depicted to the left of the verbal element is a circle divided into eight parts by white lines. These eight parts of the circle are in different colours and they resemble a palette of colours.

Although the figurative element is clearly visible due to its size and position, it is a simple coloured figurative shape and is likely to be perceived by the consumers as a palette of seven colours, an element usually used in the field of paints and related products, or as a mere decorative element and not as an element indicating the commercial origin of the goods and services. Therefore, its degree of distinctiveness is low for the relevant goods and services.

There is a black spot in the centre of the circle and eight black lines between the coloured parts, which gradually become light grey; these are of a rather decorative nature and consequently of less trade mark significance.

The contested sign has no elements that could be considered clearly more dominant than other element, since neither its figurative element nor its verbal element is more eye-catching than the other element.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

In the present case, the earlier trade marks and the contested sign contain figurative elements that are clearly visible. However, it is more likely that the consumers will refer to the earlier marks by their verbal elements, ‘PROFI’, ‘FARBEN PROFI’, SPAR PROFI’ and ‘EMV-PROFI’, and to the contested sign by the verbal element ‘PAINTEXPERTS’, than by the circles in different colours in front of them. Despite the lack or low degree of distinctiveness of the majority of the word elements, it is still more likely that consumers will refer to the marks by their verbal elements than by describing the figurative devices, which are not easily described and are not particularly striking, original or unusual and will be perceived as either decorative elements or a palette of colours. Therefore, in the earlier trade marks and the contested sign, the aforementioned verbal elements will have a stronger or at least an equal impact on the consumers than the figurative elements.

Visually, the signs coincide in that the verbal elements start in the bottom right part of the circle. However, the verbal elements of the earlier trade marks, ‘PROFI’, ‘FARBEN PROFI’ and ‘SPAR PROFI’, and of the contested sign, ‘PAINTEXPERTS’, differ visually in their length, the number of letters, the distribution of letters and also the size and colour of the letters.

The signs partly coincide in the shape of the figurative elements, which are unfinished circles; however, this shape is aslant in the earlier trade marks and vertically aligned in the contested sign. The signs also coincide in that the bottom right part of the figurative element is white and the beginnings of the verbal elements are in this part. However, the white part of the earlier trade marks is twice as big in the earlier trade marks as that in the contested sign. The signs coincide in that they are divided by white lines; however, the figurative element of the contested sign contains twice as many white lines as the earlier trade marks; consequently, the contested sign is divided into eight parts, whereas the earlier marks are divided into four parts. Furthermore, the earlier marks contain three colours in addition to white and the contested sign contains seven colours in addition to white.

In its observations, the opponent argues that the features of the figurative elements of the earlier trade marks are the same as those that characterise the general impression of the contested application. Except for small differences, when assessing the trade mark without conducting an analytical or comparative examination and without paying special attention to negligible differences, the figurative elements, which are the main features of the earlier trade marks, are identical or at least highly similar to the figurative elements of the contested sign, which are the main features of this mark.

The figurative elements of the conflicting signs contain differences, as described above, which will be perceived by the consumers without comparing the signs side by side and without carrying out any detailed analyses. Because of the variety and distribution of the colours and the size of the parts into which the figurative elements are divided, and also because the figurative elements of the earlier marks appear aslant, unlike that in the contested sign, the overall visual impressions of the figurative elements of the earlier trade marks and of the contested sign are different. Furthermore, contrary to the opponent’s arguments, the figurative elements are not the main features of the marks but have a lesser or at most an equal impact on the consumers than the verbal elements.

As the signs’ commonalities appear irrelevant in comparison with the differences between them, it is concluded that the signs are not visually similar.

Aurally, the pronunciation of the signs does not coincide in any of the syllables. The verbal elements of the earlier trade marks, namely ‘PROFI’, ‘FARBEN PROFI’, ‘SPAR PROFI’ and ‘EMV-PROFI’, will be pronounced differently from the verbal element of the contested sign, ‘PAINTEXPERTS’.

As the signs do not aurally coincide in any element, it is concluded that the signs are aurally dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The verbal element ‘PROFI’ in the earlier trade marks and the verbal element ‘EXPERTS’ in the contested sign will be associated with similar meanings, namely that someone who is a professional in a specific area can also be an expert in that area. However, these elements are non-distinctive in relation to the relevant goods and services; therefore, this commonality is of limited importance.

The commonality in the semantic meaning of the verbal elements ‘FARBEN’ of earlier trade mark No 2 and ‘PAINT’ of the contested sign is also of limited importance, since the relevant goods are goods in Class 2, such as paints, varnishes, lacquers, etc., and the goods in Classes 1 and 3 and services in Class 35 are all related to paints; therefore, these verbal elements are non-distinctive in relation to these goods and services.

In earlier trade mark No 3 and the contested sign, the verbal elements ‘SPAR’ and ‘PAINT’ will be associated with different meanings.

The verbal element ‘EMV’ of earlier trade mark No 4 has no meaning for the relevant public and is distinctive in relation to the goods; however, it is not similar to the verbal elements of the contested sign.

The figurative elements of the earlier trade marks will be perceived as aslant circles of a decorative nature and the figurative element of the contested sign will be perceived either as a palette of colours or as a circle of a decorative nature.

Therefore, the signs are conceptually similar to various degrees; earlier mark No 2 and the contested mark can even be considered to be conceptually identical. However, this conclusion has to be seen in the context of the above explanations, namely that this conceptual commonality is based only on non-distinctive concepts.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of earlier marks No 1, No 2 and No 3 must be seen as low for all the goods. Earlier mark No 4 as a whole has a normal degree of distinctiveness in relation to the services on which the opposition is based, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, all the contested goods and services are deemed identical to those of the earlier trade marks. The goods and services target both the public at large and business customers with specific professional knowledge. The degree of attention of the relevant public is average. The signs are similar to various degrees or even identical conceptually and they are dissimilar visually and aurally. The distinctiveness of earlier trade marks No 1, No 2 and No 3 is low and the distinctiveness of earlier mark No 4 is normal.

The signs under comparison contain verbal elements that are different visually and aurally and, although conceptual similarity or even identity was established, this has a very limited relevance, since the similarity or identity was based only on non-distinctive concepts. The figurative elements have sufficient differences to be perceived by the consumer without comparing them side by side, and, moreover, they will not have a stronger impact on the consumers than the verbal elements. One part of the coloured circle is missing in all the signs, the verbal elements are in similar positions and there are white lines between the coloured parts of the figurative elements; however, this is not sufficient to find overall similarity between the signs, because the differences in the verbal elements are striking and the colours and their number and distribution in the figurative elements contribute more to the overall different composition of the figurative elements than the abovementioned similarities. Therefore, the Opposition Division is of the view that the aforementioned differences are sufficient to dispel likelihood of confusion.

It remains necessary to consider the opponent’s argument that the earlier trade marks constitute ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘PROFI’, ‘FARBEN PROFI’, ‘SPAR PROFI’ and ‘EMV-PROFI’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. Therefore, the applicant failed to support its argument with evidence and, accordingly, it has to be set aside.

Considering all the above, even assuming that the goods and services are identical, 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

Michaela SIMANDLOVA

Birute SATAITE-GONZALEZ

Zuzanna STOJKOWTICZ

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.